R 0008/17 - No need to deal with written argument

Key points

• From now on, I will also discuss unsuccessful petitions for review cases, if they are interesting because of the guidance they give to the procedural framework of the appeal proceedings. 
• In reviewed decision T 1477/15, the Board had found the subject-matter at issue to be inventive (by the way, it was the third decision in the same opposition, after T 468/09 and T 801/13). 
• " One of the petitioner’s [opponent's] complaints is that the written arguments on documents D2 and D4 as closest prior art were not reflected in the written reasons and thus ignored by the Board. This amounted to a fundamental violation of its right to be heard." 
• The Enlarged Board: " The Board [BoA] explained in some detail in the written decision why it did not allow a discussion on documents D2 and D4 as possible starting points for assessing inventive step in the second oral proceedings. [The complaint against that decision regarding the oral proceedings, was already found inadmissible] It can therefore not be assumed that the position the Board took on this procedural issue was incorrect. Viewed from that perspective, the Board cannot be criticised for not considering any further the petitioner’s written submissions on D2 and D4 as closest prior art. Indeed, it would have been highly questionable and contradictory to deal in substance with an argument of a party in the written reasons after not allowing a discussion on it in the oral proceedings. The procedural situation in the present case differed from the situation where arguments of a non-attending party are not reflected in the decision." 
• Contrast this with the statement that "Taken as a whole, the RPBA make it clear that appeal proceedings are primarily written in nature"  (CLBA IV.E.4.2.4). 
• As a further comment, the Court of Appeal The Hague found the subject-matter to be obvious  with D4  (Rodsten) as the closest prior art (ECLI:NL:GHDHA:2018:513, paras. 2.15,  4.10, 4.22 and 4.25). 

R 0008/17  - link

26. One of the petitioner’s complaints is that the written arguments on documents D2 and D4 as closest prior art were not reflected in the written reasons and thus ignored by the Board. This amounted to a fundamental violation of its right to be heard.

27. As already summarised (see section IV(a) and point 22 above), the Board explained in some detail in the written decision why it did not allow a discussion on documents D2 and D4 as possible starting points for assessing inventive step in the second oral proceedings. It is not a matter for the Enlarged Board to review the merits of the petitioner’s complaint concerning the non-allowance of the discussion as such, since the petition is regarded as inadmissible in that respect (see point 13 above). It can therefore not be assumed that the position the Board took on this procedural issue was incorrect. Viewed from that perspective, the Board cannot be criticised for not considering any further the petitioner’s written submissions on D2 and D4 as closest prior art. Indeed, it would have been highly questionable and contradictory to deal in substance with an argument of a party in the written reasons after not allowing a discussion on it in the oral proceedings. The procedural situation in the present case differed from the situation where arguments of a non-attending party are not reflected in the decision.