R 21/11 – Unheard

Sometimes petitions for review do succeed, as the present decision shows.

The petition had been filed after Board of appeal (BoA) 3.3.01 in its decision T 584/09 – which was reported on this blog (here) – had revoked the opposed patent, which the Opposition Division (OD) had maintained in amended form.

During the opposition proceedings, the opponent filed document D8 which it believed relevant for inventive step. The OD found that this was not the case.

In the appeal proceedings, the opponent used D8 for both novelty and inventive step arguments.

On September 17, 2010, the Board summoned the parties to oral proceedings (OPs) to be held on February 3, 2011. There was no annex expressing the provisional opinion of the Board.

On December 3, 2010, the patent proprietor filed an expert opinion by Prof. Mehlhorn regarding the interpretation of D8.

Shortly before the OPs, on January 26, 2011, the Board sent a communication in which it expressed the opinion that document D8 was destructive of novelty.

On January 31 2011, the patent proprietor requested that the case be remitted to the OD, or that the proceedings be continued in writing, or that the OPs be postponed.

On February 1, 2012, it filed a second expert opinion by Prof. Mehlhorn (which will be referred to as “MEO2” in what follows) as a reaction to the communication by the Board and requested the Board to admit it into the proceedings.

At the end of the OPs the Board revoked the patent, which triggered the petition for review.

The request was based on two alleged substantial procedural violations:

(a)  the Board had decided on the appeal without having decided on the request to admit MEO2; moreover, by ignoring MEO2 the Board had violated the patent proprietor’s right to be heard;

(b)  the patent proprietor had not had sufficient time to prepare a statement on the objection of lack of novelty, which the Board had raised only five working days before the OPs; this again amounted to a violation of the patent proprietor’s right to be heard.

The decision is somewhat lengthy. If you just want a short take-away, here is a translation of the headnotes:

• “Relevant” in R 104(b) means “suitable for leading to a different outcome of the appeal proceedings”.
• An objection under R 106 has to be raised expressis verbis; a request for remittal, for postponement or for continuation in writing does not qualify as such an objection. 
• The replacement of members of the BoA who have participated in the decision that is set aside lies within the discretion of the EBA, which exercises this discretion in a just and appropriate manner, taking due account of the facts of the case. 
• The fee for petitions for review is to be reimbursed when the proceedings are re-opened before the BoA, even if further requests filed with the petition for review (here: replacement of members of the BoA) are unsuccessful, i.e. even if the requests of the petitioner are only partly successful.

For those who want the real thing, just read on:

*** Translation of the German original ***

Admissibility – Procedural violation (a)

[1] At first sight it appears that the parties, as far as the admissibility of the petition for review in view of procedural violation (a) is concerned, are stuck in a dispute regarding the facts of the case and, consequently, contradictory arguments. The petitioner asserts that its representatives had referred to MEO2 during OPs before the BoA, whereas the [opponent] declares that none of the persons which represented it had heard any mention of this expert opinion. The petitioner refers to the fact that it had filed a written request to admit MEO2 into the proceedings, which had never been withdrawn, whereas the [opponent] argues that the petitioner should have checked the receipt of the written submission by the BoA and should have intervened when the BoA requested the parties to state their requests. The petitioner explains that it had relied on the admission of MEO2 to the proceedings, whereas the [opponent] argues that the petitioner could have requested a decision on that matter, which it had not done.

[2] However, the [opponent] has qualified its statement at a later time in such a way that the dispute between the parties is in large part irrelevant. The [opponent] declares that the petitioner could have requested a decision on the admissibility of the second expert opinion but had not done so because it probably had believed that the expert opinion had been admitted. If the petitioner had acted on the assumption that the BoA had admitted MEO2 into the proceedings and if the [opponent] acknowledges that the petitioner had indeed believed this, then the EBA can also come to the conclusion that the petitioner held this belief until it realised, upon receipt of the written decision, that the BoA had overlooked (or never seen) the request.

[3] The dispute of the parties concerning the factual situation – i.e. the question of what the representatives of the petitioner have or have not said in regard of MEO2 during the OPs before the BoA – can be explained in large part by the apparent misunderstanding to which the EBA has referred the parties during the OPs, and which, as the parties have admitted, could have occurred […].

In view of the circumstances it is likely that the fax of the petitioner sent on February 1, 2011, had not reached the BoA when the OPs took place and that, as a consequence, it was not aware of MEO2. As there was already an expert opinion by Prof. Mehlhorn on file, the BoA and the [opponent] may have understood the petitioner’s reference to MEO2 to be references to the first expert opinion. The petitioner, however, believed that the BoA had considered MEO2 to be admitted, whereas the [opponent] simply did not mention it because it was not its own document and there was no reason for it to refer to it.

[4] In view of this misunderstanding this particular criticism by the [opponent] of the petitioner’s way of conducting the proceedings is less persuasive. It is true that the petitioner could have checked whether its fax of February 1, 2011, had been received, but as it believed that MEO2 had been admitted, there was no reason to do so. It is for the very same reason that the petitioner has not intervened when the list of requests was read out. In this context the [opponent] pointed out, by referring to R 14/10 [5.3, 6.1], that a party has to intervene when the requests that are read out do not correspond to its intention and that, if it does not do so, former requests that are not mentioned are obsolete (überholt). However, in the present case the petitioner believed that MEO2 had been admitted and, therefore, did not see any reason let alone a duty to intervene. The misunderstanding on which Mehlhorn expert opinion was referred to by the petitioner in the OPs also explains why the request for admission of MEO2 does not appear in the minutes of the OPs and why the expert opinion itself is absent from the list of documents cited in the written decision […].

[5] As far as the final argument of the [opponent] is concerned […], i.e. that it would be unfair (unbillig) when a party that had not mentioned the admission of a new document during the OPs later filed a petition for review asserting that the BoA had not taken this document into account, the EBA in principle agrees. However, when, as in the present case, a party does not explicitly refer to the question of admissibility of the document because it has good reason to act on the assumption that it had been admitted – even if it is mistaken –  although it has not, then it would be unfair not to allow it to file a petition for review.

[6] The [opponent] submitted that its argument should in particular hold true when a document was filed shortly before the OPs. Again, the EBA in principle agrees – it would be clearly wrong and presumably even abusive if a party filed a document together with a request to admit it, omitted to mention the request during the OPs and then filed a petition for review because there had been no decision on that request. However, the present situation is different. It is true that the petitioner has filed MEO2 shortly before the OPs, but it has done so because the BoA had raised an objection (possible lack of novelty over D8) only five working days before the OPs, an objection that had not been raised before during the opposition and appeal proceedings before, as even the [opponent] admits. In the situation described by the [opponent] the alleged procedural violation – to use the words of the [opponent] – would be due to the petitioner, to whom the use of the exceptional provision provided by R 106 could indeed be refused.

[7] The [opponent] also submitted, referring to the travaux préparatoires, that R 106 – including the exception provided therein – had to be applied in a strict manner because the request for petition was an exceptional legal remedy affecting legal security and that, therefore, the request was only to be allowed if a decision was deficient to a point that its maintenance was unacceptable. Once again the EBA agrees on the point of departure. Until now R 106 has been interpreted in a strict and consistent way such that the objection within the meaning of this provision requires a distinct and explicit expression […]. The exception provided in R 106 is applicable only if a petitioner can persuade the EBA that it was hindered from raising the objection in the appeal proceedings. In the present case the EBA is indeed convinced that it is not necessary to invoke the travaux préparatoires. It should also be noted that the passages in the travaux préparatoires to which the [opponent] referred (CA/PL 17/00, numbers 5 and 6) contain “general remarks” regarding petitions for review and do not refer to specific provisions as they have since then been laid down in R 106.

[8] Thus the EBA can endorse the argumentation of the petitioner that it had not been able to raise an objection against procedural violation (a) during the appeal proceedings because it discovered the fact that there had not been a decision on the request under consideration only when the written reasons for the decision were available.

Admissibility – procedural violation (b)

In its decision R 4/08 [2] the EBA found that an objection under R 106 has to be expressed in such a form that the BoA is able to recognise immediately and without doubt that an objection pursuant to R 106 – that is one which is additional to and distinct from other statements, in particular arguing or even protesting against the conduct of the proceedings or against an individual procedural finding – is intended by the party concerned. This decision and in particular the requirement that in addition to an objection against the conduct of the proceedings a distinct objection under R 106 has to be raised has been approved and applied or mentioned in several subsequent decisions (see the list in R 14/11 [2.6]).

[10] The petitioner invokes the fact that by letter of January 31, 2011, it had filed requests (that the case be remitted to the first instance or that the proceedings be continued in writing, or that the OPs be postponed, respectively) and that it had maintained those requests in the OPs. In view of the short period remaining until the OPs, the requests would have helped it to react to the objection of lack of novelty raised in the communication of the BoA dated January 26, 2011. This was tantamount to raising an objection of a violation of the right to be heard. Therefore, this objection fulfilled the criteria set forth in R 4/08.

The EBA cannot agree.

It is true that the petitioner has raised an objection against the short period, but this only amounts to an objection against the conduct of the proceedings, which was raised before the violation of the right to be heard occurred. The petitioner did not raise an additional objection under R 106 later on, and even the petitioner has confirmed that it had not raised such an objection expressis verbis. It follows from the requirements for an objection within the meaning of R 106, i.e. that the underlying substantial procedural violation under R 112a(2)(a) to (d) and R 104 has to be indicated and – in case of OPs – be taken to the minutes (see R 4/08 [2.1-2]) that only an objection that has been made expressis verbis can be sufficient. As the EBA has stated in its decision R 14/11, a request for remittal or postponement does not qualify as an objection within the meaning of R 106; consequently this also holds true for a request that the proceedings be continued in writing.

Thus the EBA comes to the conclusion that the request is inadmissible in view of procedural violation (b).

Allowability – procedural violation (a)

[11] Irrespective of the question whether the fax containing MEO2 had reached the members of the BoA before the OPs (of which the EBA is not convinced, see under [3] above), it has to be stated that a decision on the request to admit this expert opinion is not apparent in the minutes of the OPs or the written decision of the BoA. Thus the EBA is of the opinion that the BoA has objectively ignored the request of the petitioner to admit MEO2. It is irrelevant whether this was due to reasons for which the BoA cannot be blamed subjectively, for example because the expert opinion, which was filed shortly before the OPs had not reached the BoA. The only argument of the [opponent] in this respect – i.e. that the BoA had not decided on this request because it had not been asked to do so – is unpersuasive, for the same reasons as the arguments regarding the admissibility (see above under [4]).

[12] Therefore, in view of R 104 (b), the only question to be answered is whether the request on which there was no decision was relevant for the decision. In this respect the petitioner and the [opponent] had differing view on what the criterion “relevant” meant and, consequently, how it was to be applied in the present case. The petitioner argues that the relevance test did not consist in whether the request on which there was no decision would have made a difference for the decision, but in whether it could have made a difference. It refers to the fact that MEO2 dealt with the question how D8 would be interpreted by the skilled person and, therefore, provides evidence that, in its opinion, could have led to a different outcome regarding lack of novelty and inventive step. The [opponent] argues that the request to admit MEO2 was irrelevant for three reasons: firstly, because the request did not exist any more; secondly, because the expert opinion would not have changed the outcome, even if it had been admitted to the proceedings; and thirdly, because “relevant to that decision” (hierfür relevant) in R 104 meant “relevant to the decision as a whole” (relevant für die gesamte Entscheidung) and because, therefore, the expert opinion would not have made a difference because the requests that would have been found to be novel would necessarily have been found to lack inventive step.

[14] The EBA dismisses the first argument of the [opponent] according to which this request did not exist any more, which is based on the same line of argument as the one used in respect of admissibility, i.e. that the petitioner had not mentioned the request when the BoA read out the requests of the parties and that, therefore, the request was obsolete. This argument cannot succeed, for the same reasons as above (see under [4] above) because the petitioner (actually, as admitted by the [opponent]) believed that MEO2 had been admitted to the proceedings.

[15] As for the argument according to which MEO2 would not have changed the outcome, and the corresponding argument of the petitioner, the content of the expert opinion could have led to a different result, both parties have insisted in their argumentation on the decision and on MEO2 […]. The EBA cannot examine or decide whether taking account of MEO2 would have led to a different result because this would be tantamount to examining substantive questions related to the appeal proceedings, which cannot be the object of petition proceedings (see R 1/08 [2.1] and the travaux préparatoires cited therein).

[16] This is also true because the question of whether the decision on the patent would be different if MEO2 was taken into account is the very question for which the Technical BoA alone is competent and which the BoA has to answer if the petition for review is found allowable and the proceedings before the BoA are re-opened.

[17] When interpreting the requirement of R 104 (b), i.e. that the request must have been relevant to that appeal, it has to be taken into account that the ground for petition consisting in that a request has been ignored is a particular expression of the right to be heard and that this right exists independently of whether the party would have had to offer something that would have persuaded the BoA. In principle it would be wrong to define the relevance within the meaning of R 104 (b) so narrowly that the ground described in this rule would not be met whereas the ground under A 112a(2)(c) would be met under the very same circumstances.

[18] Such an argument – i.e. that the request on which there was no decision was not relevant because its admission would not have made any difference – could only be successful if it was demonstrated that everything that was “lost” because of the non-admission was nevertheless taken into account in the decision under consideration.

In the present case this means that […] it had to be apparent in the decision that the BoA completely dealt with all statements of MEO2 as to their substance in its decision. As the [opponent] has invoked the fact that MEO2, and, as a consequence, the fact that the BoA had ignored the request for its admission, was irrelevant, it should have provided corresponding evidence. The EBA is not convinced that this has happened. The written and oral arguments of the parties show that […] the parties differ on the meaning of MEO2 with respect to the teaching on the systemic treatment of insects that D8 would convey to the skilled person, and the EBA considers that it has not been sufficiently established that the BoA in its decision has taken account of all the arguments that the petitioner derives from MEO2. Therefore, the argument of the [opponent] is not persuasive.

[19] The third argument of the [opponent] appears to circumvent the discussion of substantive questions insofar as it presupposes that the petitioner is right and that in the light of MEO2 the BoA would not have found the main and fourth auxiliary requests to lack novelty over D8. The [opponent] points out that irrespective of those requests all the other auxiliary requests of the petitioner had been found to lack inventive step and – as these requests were more narrow than the main request – the main request would necessarily have been unsuccessful, for the same reason as the auxiliary requests. According to the [opponent], “request relevant to that decision” (“hierfür relevanter Antrag”) means relevant for the whole decision; in other words, when the final result would be the same – even if for different reasons – then a request on which there was no decision could not be relevant.

The EBA cannot follow this argumentation. It is true that it does not require substantive questions to be considered in as much detail as the arguments of the parties regarding the content of MEO2, but it nevertheless leads into the forbidden ground of substantive questions. The EBA would have to compare the scope of protection of the individual requests of the petitioner, decide which are broader or narrower, put itself in the place of the BoA and decide whether the requests dismissed for lack of novelty would also have been dismissed for lack of inventive step.

[21] The petitioner’s argument that MEO2, if taken into account, could have influenced the decision of the BoA on inventive step […], also has to be noted. As the question of inventive step, in particular over D8, was a subject of dispute between the parties, even before the appeal proceedings, one might be tempted to ask why evidence from MEO2 that could help the petitioner had not been filed before, but similar to what has been said in regard of the argument of the [opponent], the EBA cannot pursue this line of thought without dealing with the substantive questions related to the patentability of the claimed subject-matter. Moreover, the fact that the OD and the BoA have come to different conclusions on inventive step suggests that the case might not have been so clear that the decision was inevitable, as the [opponent] asserts.

[22] The petitioner argues that the relevance test should not examine whether a request on which there was no decision would have led to a different outcome if there had been a decision, but whether it could have led to a different outcome. Generally speaking, the EBA agrees. It would not make sense to grant a petition for review if a request on which there had not been a decision could not have had any effect whatsoever on the outcome of the appeal, even if it is clear that the request had been ignored. However, if relevance was limited to cases where it was possible to establish beyond doubt that the outcome would have been different, the provision under R 104(b) would lose most of its power (irrespective of the fact that it would require a review of substantive questions). Therefore, the EBA is of the opinion that it is appropriate to define “relevant to that decision” (“hierfür relevant”) in R 104 (b) as suitable for leading to a different outcome of the appeal proceedings.

[23] This opinion is in line with the case law of the EBA regarding the violation of the right to be heard as a ground for review, of which, as mentioned above (see [16]), the fact that a request has not been decided upon is a particular expression. According to the established case law of the EBA it is required that there is a causal link between the procedural violation of the right to be heard and the decision that has been taken, in the sense that the procedural violation was decisive for the decision (established case law following R 1/08 [3]), i.e. it cannot be excluded that the decision would have been different if the right to be heard on the issue in respect of which the party made a complaint, had been granted. This condition is fulfilled in the present case. Thus under the present circumstances the fact that MEO2 was ignored was relevant for the decision within the meaning of the case law of the EBA.

[24] The EBA is of the opinion that the procedural violation (a) also constitutes a violation of the right to be heard (A 112a (2)(c) together with A 113(1)). The petitioner has argued that this violation occurred because MEO2 was ignored. However, the EBA traces it back to the fact that the BoA, as already established, has ignored the request to admit the expert opinion. The petitioner has filed the request and, according to its own submissions, has also mentioned the expert opinion in its argumentation during the OPs, but, as has turned out later, the BoA probably never received the request and has not decided on it. The BoA has heard the arguments of the petitioner but not within the framework of an admitted request to take into account the expert statement of the party’s expert. Therefore, under the unusual circumstances of this case, the petitioner was refused the opportunity to comment on its own request. If the request had been granted, it could have influenced the outcome of the proceedings, which means that there was a causal link between this denied opportunity to comment and the decision of the BoA (see R 1/08 mentioned above under [22]).

[25] Thus the EBA finds that in view of procedural violation (a) both the grounds under A 112a (2)(c) and (d) and R 104(b) are fulfilled and that, therefore, the decision has to be set aside.

Allowability – procedural violation (b)

[26] As the EBA has decided that the request is inadmissible in view of substantial violation (b) (see above under [9] and [10]), the question of its allowability is irrelevant.

Replacement of the members of the BoA

[27] If the petition is allowable “[t]he EBA may order that members of the BoA who participated in taking the decision set aside shall be replaced” (R 108(3), second sentence). The use of the word “may” (“kann”, “peut”) is significant because it establishes that the EBA has the discretion to order or not to order a replacement of members of the BoA. This discretion has to be exercised in a just and appropriate manner, taking due account of the facts of the case. For instance, if it turned out that the members that had participated in a decision to be reviewed were biased or could have been biased, or if they, because of their own decision, should have preconceived opinions on issues that should be examined afresh, then it could be appropriate (or, in case of a clear bias, required) to order replacement. However, if there is no acceptable reason for ordering a replacement, it should not be ordered, not least in order to avoid that the amount of money and time spent as a consequence of the re-opening of the proceedings further increases.

[28] The petitioner has argued that if the composition remained unchanged, the same persons would again decide on the same issues. This argument appears to contradict the main argument of the petitioner according to which MEO2 and the corresponding request had not been considered and their consideration would lead to a different result. If they are now considered, then the questions on file are different because then MEO2 is taken into account (if it is admissible), which is precisely what the petitioner desires.

[29] The further arguments of the petitioner, i.e. that there might be a bias if replacement is not ordered, are not persuasive either. In the present case there are no signs of bias. The EBA is of the opinion that the assertion of the petitioner, according to which this case was similar to T 1028/96, is somewhat far-fetched. In this early decision it is stated (see point [6.5] of the reasons] that this case was “very particular” and essentially concerned the configuration where the same questions were submitted twice to the very same BoA member, which, as already stated (see above under [27]) is the opposite of the present situation.

[30] The first step in re-opened appeal proceedings will be to deal with the request to admit MEO2 into the appeal proceedings. The EBA does not see any reason why the members of the BoA that dealt with the appeal before could not decide on this request, which they have not dealt with before. Nor does the EBA see any good reason why these members could not examine the case afresh, including MEO2, if the request is admitted. The only issue to be decided in the framework of the request to maintain the impugned patent […] is whether the additional evidence makes a difference. Replacing the previous members would mean that a BoA in new composition would have to carry out afresh the whole appeal proceedings, spending a corresponding amount of money and time, in order to come to a final decision, which would be unnecessary and disproportionate in the present circumstances. Although it is up to the BoA to determine how to deal with the re-opened proceedings, there is no apparent reason why it will not be able to decide the case speedily. This is in the interest of the public and the parties, in the case of the petitioner not least because of the provisions of A 112a (6).

Reimbursement of the fee for petitions for review

[31] The fee for petitions for review is to be reimbursed although the request of the petitioner for replacement of the members of the BoA is not granted and, as a consequence, the requests filed by the petitioner in its petition for review are only partly allowed in the present decision. Pursuant to R 110, the EBA shall order the reimbursement of the fee for a petition for review if the proceedings before the BA are reopened. Whenever the the proceedings are to be re-opened, the fee has to be reimbursed.

Since then, the BoA has changed its composition of its own motion because the former chairman will retire in early 2013. Consequently, there will be a new chairman when the BoA will take its decision.

My personal guess is that the BoA will still revoke the patent.

To download the whole decision (in German) or have a look at the file wrapper, just click here.

NB: Would you be so kind and participate in the poll on translations of decisions (on the blog).