Key points
- This is the 9th successful petition for review.
- The impugned appeal decision T 2378/13 is set aside.
- The TBA 3.5.02 had - very remarkably - held (in translation) that the opponent as the appellant had submitted with its statement of grounds (in translation) " a variety of different arguments against the inventive step of [operative claim 1]. However, none of these arguments are based on the generally accepted problem-solution approach for assessing inventive step. Consequently, the appellants' allegations concerning the inventive step in writing are disregarded in this decision. During the oral proceedings, before the board, the [opponent/appellant] made attacks using the problem-solution approach, which the board acknowledged." The board found that claim 1 was inventive in view of the considered inventive step attacks.
- The opponent/appellant filed a petition for review.
- The Enlarged Board finds that the underlined part is a surprise decision of the TBA.
- “Damit beruht die Entscheidung auf einem Grund, zu welchem sich die Einsprechende vor deren Kenntnisnahme nicht äußern konnte. Der Grund lautet: Ausführungen ohne Verwendung des Aufgabe-Lösungs-Ansatzes können nicht berücksichtigt werden. ... Der neue Grund war nicht vorhersehbar, da die Beschwerdekammer ihn - wie oben ausgeführt - nie genannt hatte. Die Kammer wäre verpflichtet gewesen, der Antragstellerin vor Erlass der Entscheidung Gelegenheit zur Stellungnahme zu dem Grund zu geben.”
- Although not discussed at all in the present decision, and not explained in T 2378/13 at all, I personally do not exclude that the TBA in T2378/13 was of the view that the opponent was obliged to choose one and only one document as the closest prior art for inventive step and that the Board was of the view that holding the inventive step attacks inadmissible was a proper sanction for the opponent not making such a choice for one and only one CPA document. But let's see what the TBA does after the remittal.
- An important remark about the nature of oral proceedings before the Board: “The respondent took the view that the opponent's representative should have expressly repeated written submissions - that is, the one on inventive step in the grounds of appeal - in the oral proceedings so that they could be taken into account in the board's decision. After he had not done that, an implicit waiver of its consideration can be assumed. This can not be followed. The view that written submissions would have to be repeated at the oral hearing in order to be taken into account would contradict the principle of the written procedure already mentioned in the notice of summons of the Enlarged Board of Appeal mentioned above in the relevant part. This principle arises from the procedural rules for appeal proceedings in the EPC, in particular its Article 108 and Rule 99 (3) in conjunction with Rule 35 (1) and Rule 50 (3), as well as the Rules of Procedure of the Boards of Appeal (VOBK), in particular Articles 12 and 13 thereof 13. Oral proceedings in accordance with Article 15 RPBA usually conclude the procedure.”
- Hence, there is generally no obligation to expressly repeat all arguments made in writing.
- As to the issue of possible waiver of arguments by not repeating them during the hearing: “With regard to the defendant's assumption of an implicit (tacit, implied) waiver of written submissions due to the fact that it was not mentioned at the hearing, strict requirements would have to be made in view of the principle of the written form of the proceedings. An implicit waiver would be conceivable, for example, if statements in writing or during the oral hearing contradict previous written statements. In the event of doubt, it would then be incumbent on the Board to ask questions to clarify which submissions should currently be based on the case. However, there are no indications for this.”
- Hence, not repeating arguments in the oral proceedings is generally no implicit waiver of arguments presented in the written submissions in appeal.
- However, procedurally, any violation of this rule by a Board of Appeal would require a petition for review and there is as far as I know no settled case-law of the EBA that the petition will be successful in such cases.
Translation
Facts and submissions
[The following statements are taken verbatim from Part A of the notice of summons.]
I. The opponent's (applicant) request for review - submitted by a professional representative - is directed against the decision of the Technical Board of Appeal 3.5.02 in appeal case T 2378/13. In this case, the opponent filed an appeal against the interlocutory decision of the opposition division, with which it maintained European patent No. 2 091 029 in amended form on the basis of the main request at the time. The opponent had requested that the contested decision be set aside and the European patent revoked. With the decision under review, the Board of Appeal overturned the decision of the opposition division. She referred the matter back to the opposition division with the order that maintains the patent as amended on the basis of the claims of the new main request of April 1, 2019 and a description that has yet to be adapted.
The decision was announced at the oral hearing on April 1, 2019, and the written decision with reasons for the decision was posted to the parties on April 24, 2019.
The name of the invention is:
Hazard detection with the inclusion of a temperature measuring device integrated in a microcontroller.
The opponent's and appellant's request for review in the proceedings before the Board of Appeal is based on a serious violation of the right to be heard under Article 112a (2) c) in conjunction with 113 (1) EPC. Two procedural defects are alleged:
- - Without prior notice, the Board of Appeal surprisingly ignored all of the applicant's written attacks (in the statement of grounds) with regard to inventive step (first procedural defect).
- - In addition, despite previous announcement, document E13 was surprisingly not dealt with at the hearing (second procedural violation).
[End of the quote from the notice of summons.]
II. By order of the chairman of December 19, 2019, the Enlarged Board of Appeal was expanded to five members under Rule 109 (2) b) EPC. The defendant (patent proprietor) was given a notice dated March 12, 2020 to submit a statement on the request for review.
III. In the respondent's reply of May 4, 2020, the respondent requested that the request for review be rejected as inadmissible or, in the alternative, rejected as unfounded. The inadmissibility results from a breach of the obligation to notify under Rule 106 EPC, the lack of justification from the fact that an attempt was made to have the application of substantive law checked.
IV. In its communication on the preparation of the oral hearing (hereinafter also: "Notice of summons") of September 15, 2020, the Enlarged Board of Appeal announced its preliminary and non-binding assessment.
She considered the request for review with regard to the second alleged procedural defect inadmissible due to the failure to raise a possible complaint for the applicant under Rule 106 EPC.
In contrast, the board considered the requirements of Rule 106 EPC with regard to the first procedural defect to be met and the request for review to that extent (and in its entirety) admissible. The applicant was not in a position to raise such objections in the appeal proceedings or in the oral hearing. For the time being, the board considered the request to be well-founded with regard to the first procedural violation.
Failure to comply with the attacks on inventive step put forward in writing in the statement of grounds of appeal, as expressly stated in point 5.1 of the decision, constituted a serious violation of the right to be heard (Article 113 (1) EPC) due to a surprising reasoning for the decision. For the first time from the decision, the applicant learned that statements without using the problem-solution approach could not be taken into account. This reason could not have been foreseen, in particular because it had never been invoked by a Board (" insbesondere weil er noch nie von einer Kammer herangezogen worden sei")
V. In the respondent's statement of February 11, 2021 on the Board's notification, the respondent repeated its requests and added a further auxiliary request (see below, No. VIII).
Regarding the merits of the alleged first procedural defect, the respondent said that the statement in the decision: " The appellant's written attacks on inventive step are consequently not taken into account in this decision." could not be a surprise to the applicant.
With regard to the obligation to notify, the respondent stated that the applicant had the obligation to address issues that might have been overlooked and, if necessary, to initiate their treatment with a formal application.
VI. The applicant did not submit an opinion on the matter on the notice of summons of the Enlarged Board of Appeal.
VII. In the oral proceedings before the Enlarged Board of Appeal, in relation to the first alleged procedural defect, the question was discussed of whether the opponent's representative should have expressly repeated written submissions so that it would be taken into account in the board's decision, otherwise there would have been an implicit waiver. The question was also discussed whether, if the reopening of the proceedings were to be ordered, this should be limited to points not yet dealt with by the Board of Appeal.
VIII. In the oral proceedings, the parties confirmed their written requests as Opinions as follows (addition made in the oral proceedings in bold):
The applicant requested
- Set aside the decision T 2378/13 of the Technical Board of Appeal 3.5.02 of April 1, 2019 and reopen the proceedings before the Board of Appeal without restriction,
- to replace the members of the Board of Appeal who participated in the contested decision,
- to reimburse the fee for the request for review.
The respondent requested
- to reject the request for review as inadmissible,
- alternatively, reject the request for review as unfounded,
- further auxiliary : "Any reversal of decision T2378 / 13 and an order for the reopening of the proceedings before the Board of Appeal 3.5.02 must be made on the condition that the reopening of the proceedings in accordance with Art. 112a (5) EPC relates exclusively to the written reservation or "attack" with regard to inventive step is limited in accordance with Section IX of the Statement of Grounds. "
The Enlarged Board of Appeal notes that Section IX is headed as follows: "Re 3.6.2 Inventive step E13 considered alone".
Reasons for decision
[The following statements are taken verbatim from Part B of the notice of summons.]
I. Admissibility
1. Pursuant to Rule 126 (2) EPC, the reasoned decision posted on April 24, 2019 is deemed to have been served on May 4, 2019. The request for review under Article 112a EPC, together with the corresponding fee, was received on June 25, 2019, and thus on time (Article 112a (4) EPC). As for other questions of admissibility, the only issue that is raised is that of fulfilling the requirements of Rule 106 EPC (obligation to notify).
2. Duty to give notice of the second procedural defect
2.1 The position of the petitioner
The petitioner claims (under Section C.II on page 15 of the application) a serious violation of the right to be heard:
The notice of the summons announced that the inventive step would be discussed at the hearing on the basis of document E13. Subsequently, however, a completely surprising decision on the inventive step was finally reached in the hearing without E13 having been discussed. “After this decision had been made, the applicant no longer had the opportunity to comment orally on the attack from the E13, although, based on a corresponding reference in the summons to the hearing, it could assume that the Board of Appeal considered this attack to be relevant ". A complaint was no longer possible," since it was already too late to correct the decision "(see Section B.2 on page 6 above).
2.2 Assessment of the petitioner's position
The petitioner's opinion is incorrect. The protocol has the standard formulation:
“In response to a question from the chairman, the parties stated that they had no further requests or comments to make.
The chairman then declared the factual debate over and announced the following decision: ".
After the result of the inventive step assessment being announced (referred to as the final "decision" on this in the request for review), the petitioner's representative should have complained that E13 had not yet been dealt with. He should have known that the communication was about the result of the assessement on inventive step was not a final decision on this. A decision on the appeal was - as is usual in oral proceedings before the EPO boards of appeal - announced only at the end of the hearing for the whole appeal.
This knowledge is also a prerequisite for an employee of a company who - without being a professional representative - represented the petitioner at the hearing. The professional representative of the petitioner points out in several places in the petition that the petitioner was not represented at the hearing [before the TBA] by a professional representative, but by an employee of the company.
However, it is not evident that this aspect is relevant for the obligation to notify in the present case. It is up to one of the parties to decide whether - within the framework of Article 133 EPC - he or she wants to be represented by himself or, in the case of a company, by an employee, or to appoint a professional representative to act as his representative. Basically, one must assume that a company is at fault if it can be represented by an insufficiently trained employee. Whether there could be cases in which one could show indulgence towards a party not represented by a professional representative in the event of non-exercise of procedural rights [who could not raise an objection solely because of ... [lack of knowledge] can remain open. In some decisions of the Enlarged Board of Appeal, it is pointed out that certain actions can be expected from a professional representative (see e.g. R 8/13 [of September 15, 2015]: ,, a representative with normal training and experience could foresee which questions for the board were decisive ", quoted from "Case Law of the Boards of Appeal of the EPO ", 9th edition 2019 (hereinafter: "Case Law "), Section VB4.3.8.d). However, it is not evident that a lower standard would have been applied in the case of a party not represented by a professional representative (such as in the context of the due diligence to be exercised in an application for re-establishment; see case law, Section III.E.5.5.1b and in particular the decision cited there in case J 5/94).
In inter partes proceedings like here, a strict standard would have to be applied, which would in no way justify the ignorance and consequent failure to observe basic procedural practices or
- excuse (in effect) regulations [" vorschriften [im Ergebnis] zu entschuldigen"] However, this is the practice of the boards of advising on individual topics, such as inventive step, of communicating results without the character of a decision, as well as the obligation to notify under Rule 106 EPC. The latter is intended to ensure that a Board can correct errors before a final decision is made. This rule also serves to avoid unnecessary petitions for review (see case law, Section VB3.6.1.).
According to all of this, the opponent's employee should have complained, at the latest in response to the chairman's question at the end of the oral proceedings for further requests or comments under Rule 106 EPC, that document E13 had not yet been discussed during the hearing and that the board was therefore premature reported the result regarding the presence of an inventive step.
The request for review with regard to the second alleged procedural defect is therefore inadmissible. The patent proprietor (respondent), which in its response to the request for review (under No. 2.1) assumes an obligation to give notice of defects under Rule 106 EPC with regard to both alleged procedural defects and, in the absence of which, considers the request to be inadmissible, must agree with regard to the second procedural defect.
[End of the quote from the notice of summons.]
The petitioner's plea in the oral proceedings before the Enlarged Board of Appeal to the practice of the EPO's boards of appeal of dealing with the "reasons" to be examined one after the other and not referring to reasons already dealt with is impractical, since the boards are not prevented by law from doing so to deviate from this practice in individual cases and to come back to points that have already been dealt with. The reference to a different practice by German courts is also unreasonable, as this obviously cannot bind the EPO boards of appeal.
The above statements under No. 2 of the notice of summons are therefore final. This also applies to the text under No. 1 above.
[The following text is again taken from the notice of summons.]
3. Obligation to give notice of the first procedural defect
3.1 The situation is different with the alleged first procedural defect of not considering the submission in the statement of grounds. In that regard, a complaint was not possible because the failure to take into account could only be determined from the decision. This is set out below.
3.2 In the notice of the summons, the board had commented on the question of patentability as follows (under No. 3.3, last paragraph, page 6):
However, the appellant's current submissions in writing on inventive step does not use the problem-solution approach. This [i.e. the PSA] will therefore be used during the oral hearing to determine whether, based on document D2 or E13, it was obvious to the person skilled in the art to replace an external temperature sensor with a temperature sensor integrated in a microcontroller. (own emphasis)
In the text preceding this paragraph, the board nonetheless dealt - albeit briefly - with the statements in the statement of grounds on inventive step (see No. 3.3, pages 5-6). With regard to the questionable use of the temperature measurement signal of claim 1, it referred to the state of the art as undisputed, which is even evident from the patent specification, and determined a controversial feature. According to the Board, documents D1, D2, D3, D4 and E8 are likely to be unsuitable to prove this feature. The board also made brief comments on documents E5, E13 and E6.
In the opinion of the Enlarged Board of Appeal, the board has rudimentarily applied the problem-solution approach (expressly points (i) and (iv) below). As is well known, the examination of inventive step according to this approach essentially consists of (see case law, Section ID2):
(i) to determine the closest state of the art,
(ii) to assess the technical results (or effects) that are achieved with the claimed invention compared to the closest prior art determined,
(iii) to determine the technical problem whose solution according to the invention is to achieve these results, and
(iv) to examine the question of whether the claimed technical features, with which the results according to the invention are achieved, would have been obvious to a person skilled in the art in view of the state of the art within the meaning of Art. 54 (2) EPC ...
Regarding the board's criticism of the lack of use of the problem-and-solution approach in the grounds of appeal, the Enlarged Board of Appeal points out the following:
In the statement of grounds of appeal regarding inventive step, the applicant opposed the opposition division's view of inventive step - each discussing the three sections 3.6.1 to 3.6.3 of the opposition division's decision - in the corresponding three sections VIII to X. This concerned (see also the respective heading in the decision or the grounds of appeal)
- D2 considered alone and in combination with D2 and E9 (VIII. - 3.6.1),
- E13 considered alone (IX. - 3.6.2) and
- D2 in combination with E6 (X. - 3.6.3).
In the decision of the opposition division, it had expressly used the problem-solution approach in Sections 3.6.1 to 3.6.3.
In addition, the applicant submitted an additional attack from E6 in combination with D2 in the grounds of appeal (under X. - 3.6.3, pp. 31-32).
3.3 In its response to the appeal (middle of page 3 to middle of page 4), the patent proprietor apparently saw no problems in dealing with the opponent's arguments on inventive step in the statement of grounds. It did not point out that the problem-solving approach was not taken into account in the statement of grounds. Rather, it has stated that the inventive step "D2 ... is initially considered on its own and then combined with another document E9 ...", furthermore in combination with E6 (see middle of page 3) inventive step based on D2 as the closest prior art and confirmed its existence, both based on D2 alone and in combination with E6 or E9.(See lower half of page 3.) She then referred to Section IX of the Statement of Grounds, in which the opponent had considered the inventive step based on E13. She pointed out that only one document could represent the closest prior art. Separate objections based on D2 and E13 are therefore inconsistent. Finally, she explained why E13 could not be considered as the closest prior art ("no suitable stepping stone").why E13 cannot be considered as the closest prior art ("no suitable stepping stone").why E13 cannot be considered as the closest prior art ("no suitable stepping stone").
The patent proprietor obviously assumed that the opponent considered D2 and E13 as the closest prior art - which is the first step of the examination in the context of the problem-solution approach. Based on D2, it made statements on inventive step and justified why E13 could not be considered as the closest prior art.
3.4 In the decision to be checked it later says on the topic (own emphasis):
5.1 With the statement of grounds, the appellant had submitted a large number of different arguments against the inventive step of claim 1 on which the contested decision was based, which corresponds to claim 1 of the valid main request. However, none of these arguments are based on the generally accepted problem-solution approach for assessing inventive step. The appellant's written attacks on inventive step are consequently not taken into account in this decision.
During the oral proceedings before the board, the appellant submitted attacks using the problem-and-solution approach, which the board recognized.
The decision discussed the three combinations:
- "[No.] 5.2 Document E6 and general technical knowledge or D2" and
- "[No.] 5.3 Document D2 with E9".
Then it says under No. 5.4:
The board has therefore come to the conclusion [ie after the discussion in points 5.2 and 5.3] that none of the arguments put forward by the appellant during the oral proceedings regarding the lack of inventive step in the subject-matter of claim 1 apply.
3.5 In contrast to the case of the second alleged procedural defect, the failure to deal with E13 at the oral hearing, the opponent could not be required to complain that the arguments in the statement of grounds relating to inventive step had not been discussed at the oral hearing.
The opponent ... cannot be held responsible for any breach of the obligation to cooperate in the oral hearing. In R 17/11 it says (under No. 19):
It is up to the parties to raise an issue which they consider relevant and which they believe may be overlooked and, if necessary with a formal request, to insist on its treatment.
The opponent was not obliged to work towards the fact that the content of the grounds of appeal would be discussed at the oral hearing if - as is to be assumed here - it expected it to be discussed in the written reasons for the decision and would have been content with it. Also (only) written submissions of a participant must be taken into account; the complaint procedure is mainly a written procedure (see R 8/13 [of September 15, 2015], No. 13). The lack of a complaint cannot be regarded as a waiver of this argument. The results of the statements made by the applicant under Section C.2 of the request for review ("first exception") must therefore be approved.
The content of the notice of summons also did not result in an obligation to give notice of defects in the oral hearing. This is because the notice of summons only refers to the non-application of the problem-solving approach in the grounds of the appeal and that this approach will be used in the oral hearing. It is not announced that explanations could not be taken into account because of this non-application. The petitioner/appellant/opponent had no reason to make such an assumption, since - as shown above under No. I.3.2 and I.3.3 - the board and the respondent themselves - the board in any case rudimentary - use the problem-solution approach in their discussions of the grounds of appeal have applied.
Finally, according to the applicant, the board did not announce at the oral hearing that the submission of inventive step would not be taken into account in the statement of grounds (page 8, third paragraph, of the application). The protocol contains no information on this.
The results of the statements made by the applicant under Section C.3 of the request for review ("second exception") must therefore be approved.
In connection with the obligation to notify under Rule 106 EPC, the respondent submits that in the notice of summons the board had made it very clear to the applicant to prepare the problem-solution approach for the oral hearing in order to substantiate the lack of inventive step. The appellant failed to do this "(page 3 of the reply, under i); emphasis in the original). Furthermore, the appellant would have been free to present the attacks submitted in writing during the oral hearing (page 4 of the reply, under iv)).
According to the opinion of the Enlarged Board of Appeal expressed in Section 3.5 at hand, this submission by the respondent is completely ineffective.
After all, the alleged first procedural deficiency concerns a deficiency that only became apparent when the decision was served and the reasoned decision had been read. The applicant was therefore not in a position to raise such objections during the appeal proceedings or during the oral proceedings under Rule 106 EPC.
The requirements of Rule 106 EPC therefore appear to be met with regard to the first procedural defect and the request for review to be admissible in this respect.
[End of quote from notice of summons.]
3.6 In its response to the summons and in the oral hearing, the respondent challenged the above preliminary - and now final - assessment of the Enlarged Board of Appeal.
The respondent took the view that the opponent's representative should have expressly repeated written submissions - that is, the one on inventive step in the grounds of appeal - in the oral proceedings so that they could be taken into account in the board's decision. After he had not done that, an implicit waiver of its consideration can be assumed.
This can not be followed.
The view that written submissions would have to be repeated at the oral hearing in order to be taken into account would contradict the principle of the written procedure already mentioned in the notice of summons of the Enlarged Board of Appeal mentioned above in the relevant part. This principle arises from the procedural rules for appeal proceedings in the EPC, in particular its Article 108 and Rule 99 (3) in conjunction with Rule 35 (1) and Rule 50 (3), as well as the Rules of Procedure of the Boards of Appeal (VOBK), in particular Articles 12 and 13 thereof 13. Oral proceedings in accordance with Article 15 RPBA usually conclude the procedure.
The quotation given by the respondent to guideline 4 of R 2/08, which refers to No. 8.5 and 8.10 of the reasons for the decision, is obviously beside the point, as evidence of an obligation to repeat written statements in the oral hearing. According to this guiding principle, a party who claims a decision that is favorable to him must actively participate in the procedure. First of all, point 8.5 does not speak of the oral hearing at all, but of the proceedings as a whole ("procédure", not "procédure orale"). However, active participation in the proceedings is also possible in writing - according to the principle of the written procedure in the first place - and the Enlarged Board of Appeal also pointed out in R 2/08 that there was no reaction in the written reply of the party concerned (see no.8.1 aE and XIII,2nd paragraph). In addition, No. 8.5 deals with the lack of a response to a procedural objection to the consideration of a substantive submission (late raising of the reason for objection to novelty). The board had accepted the objection and had not taken into account the substantive content of the arguments.
In the present case, however, it is not about the inadequate response to the opposing side's objections, which the Board then accepted, but, conversely, about raising one's own objections which the Board ignored.
With regard to the defendant's assumption of an implicit (tacit, implied) waiver of written submissions due to the fact that it was not mentioned at the hearing, strict requirements would have to be made in view of the principle of the written form of the proceedings. An implicit waiver would be conceivable, for example, if statements in writing or during the oral hearing contradict previous written statements. In the event of doubt, it would then be incumbent on the Board to ask questions to clarify which submissions should currently be based on the case. However, there are no indications for this.
An implicit waiver would also be conceivable if a party could see from the course of the process that the board has considered the examination of the subject in question - in this case the inventive step - to be exhausted. That this is not the case in the present case has already been explained above under No. 3.5.
In view of all of the above, it cannot be assumed that the respondent implicitly waived the inventive step made in the statement of grounds of appeal.
3.7 From the above discussions it follows that the defendant's assertion of insufficient preparation of the oral hearing by the opponent's employee (in the answer to the notice of summons, no.3.3) is irrelevant for the obligation to give notice of the two procedural deficiencies that have been alleged. The objection of abuse of rights based on this assertion, which is alleged to lie in the filing of the request for review, which is said to result in the inadmissibility of the request for review, is therefore irrelevant.
II. Allowability
[The following statements are taken verbatim from the notice of summons.]
1. The admissible request with regard to the first procedural defect is justified, [because] ... the non-observance of the attacks on inventive step put forward in writing in the grounds of appeal, as expressly stated in No. 5.1 of the decision, constitutes a serious violation of the right to right to be heard (Article 113 (1) EPC) because of surprising reasons for the decision.
Under the heading "Violation of the right to be heard under Article 113 (1) EPC - surprising reasons for the decision" of R 3/15 (Section 4) it is stated under No. 4.1:
The principle of the right to be heard under Article 113 (1) EPC requires that the decision may only be based on reasons on which the parties could express their views.
This means in particular that a party involved must not be surprised by previously unknown reasons and evidence in the reasoning for the decision (see e.g. R 15/09 of July 5, 2010, R 21/10 of June 15, 2012, R 3/13 of June 30, 2010 . January 2014).(own emphasis)
2. Evaluation
2.1 In the present case, the Board of Appeal had given a brief discussion of the applicant's submissions in the statement of grounds in its summons (see point I.3.2 above). In principle, it would be conceivable to take the position that the board had thereby taken a position on the various attacks on inventive step. A repetition in the written decision is not necessary, since it can be assumed that the Chamber - in the absence of any evidence to the contrary - will adhere to this point of view. To use the formulation in the above quotation from R 3/15: In such a case, it would not be a matter of "previously unknown reasons ... in the reasons for the decision".
In addition, one could point out that a discussion of the points in question was also made by the patent proprietor in their response to the appeal (see No. I.3.3 above).
2.2 However, the above aspects do not apply. In the notice of the summons, the board discussed the various attacks on the inventive step put forward in the statement of grounds - albeit briefly - and came to a preliminary (partly negative, partly open-ended) assessment.
However, as evidenced by the express wording of the decision, these considerations no longer played a role. Because there it says (under no. 5.1) that the attacks put forward in writing - due to the lack of use of the problem-solving approach - are ignored. In this regard, only the three combinations of documents presented by the opponent at the oral hearing taking this approach into account were taken into account.
The decision is based on a reason on which the opponent was unable to comment before it became known.
The reason is: Submissions without using the problem-solution approach cannot be taken into account.
The applicant did not have to reckon with this new reason also not on the ground that she herself had not insisted that the statements on inventive step in the written statement of grounds should also be discussed at the oral hearing; see above under No. I.3.5 [and I.3.6]. Because in the written decision she only had to reckon with a foreseeable reason for these statements, such as the reason given in the notice of summons.
The new reason could not be foreseen since, as stated above, the Board of Appeal had never given it. The Chamber would have been obliged to give the applicant the opportunity to comment on the reason before making the decision.
As stated above ... [(under No. I.3.5)], the Respondent submitted in connection with the obligation to notify under Rule 106 EPC that the Board had pointed this out to the applicant in the notice of summons, "all too clearly, in support of the lack of inventive step." Activity to prepare the problem-solution approach for the oral hearing. The complainant failed to do so. "Furthermore, the complainant would have been free to present the attacks submitted in writing at the hearing.
As stated above [under No. I.3], these statements are completely ineffective with regard to the obligation to notify. ... There it was explained that neither the Respondent nor the Board of Appeal had difficulties in preparing the oral hearing in applying the problem-solution approach (the board at least rudimentarily) to the applicant's statements in the grounds of appeal. The applicant was also not obliged to repeat its written submissions at the hearing in order to ensure that they were taken into account in the decision.
In view of all of the foregoing, the present application is well founded with regard to the first alleged procedural violation.
[End of quote from notice of summons.]
This applies irrespective of the fact that - as follows from the preceding discussions - the defendant's assertion of insufficient preparation of the oral hearing by the opponent's employee (in the answer to the summons, no.3.3) does not only apply to the obligation to notify both of them procedural deficiencies made (above, No. 3.7), but also with regard to the merits of the request for review is irrelevant. The objection of abuse of rights based on this assertion, which is supposed to lie in the submission of the request for review, is therefore also irrelevant in this respect.
The above statements on the merits in the notice of summons are therefore final.
3. Consequences for the proceedings before the Board of Appeal
In the alternative, the respondent requested:
Any annulment of decision T2378 / 13 and an order for the reopening of the proceedings before the Board of Appeal 3.5.02 must be made on the condition that the reopening of the proceedings in accordance with Art. "Attack" with regard to inventive step is restricted according to Section IX of the Statement of Grounds.
(Emphasis added by the Chamber)
Section IX is headed as follows: "Re 3.6.2 Inventive step E13 considered alone".
This request cannot be granted. Rather, the proceedings before the Board of Appeal must be reopened - as expressly requested by the applicant without restriction - in accordance with Rule 108 (3), sentence 1, EPC.
The proceedings are to be resumed without the present decision resulting in a legal restriction with regard to the subject matter of the proceedings. Rather, the further examination is to be carried out in accordance with the general procedural provisions, taking into account Article 113 (1) EPC, whereby the board is bound by the legal assessment of the Enlarged Board of Appeal on which the decision is based. This bond follows from the nature of the petition for review proceedings.
A limitation of the examination to remedying the deficiency identified in the present decision - here the failure to take into account the written submissions in the grounds of appeal regarding inventive step (first asserted procedural deficiency) - as in T 379/10 of September 21, 2015 with reference to R. 21/11 accepted, will not take place. This already follows from the fact that the Enlarged Board of Appeal, due to the lack of admissibility of the request for review with regard to the alleged second procedural defect relating to inventive step based on E 13, alone did not have the opportunity to comment on this alleged procedural defect in the matter. Conversely, the restriction on the examination of inventive step based on E 13, requested by the respondent, is to be rejected in view of the failure to take into account the written submissions in the grounds of appeal regarding inventive step with regard to extensive other prior art (first procedural defect), since it is precisely this failure to consider for annulment the contested decision leads.
Reasons for other restrictions with regard to the subject matter of the proceedings are not apparent. Foregoing an analysis of the assessments of the facts already made in the decision to be reviewed (in particular the attacks against inventive step recognized by the Board of Appeal; see only 3.4 above) for procedural reasons, as indicated in R 21/11 (under No. 30) , is to be rejected. Because it cannot be ruled out from the outset that the Board could see the need for a reassessment of earlier assessments after the resumption of the proceedings in the context of the more comprehensive examination required here.
4. Replacement of the members of the Board of Appeal
The applicant requested that the members of the Board of Appeal who participated in the contested decision be replaced.
As a justification, she states (in the request for review, last paragraph) that it is
It is to be expected ... that the members of the Board of Appeal will no longer judge the matter neutrally due to the alleged violation of the right to be heard ...
The respondent made no motions in this regard. In the answer to the notice of summons, she stated (under No. 5) that "the Board of Appeal and its chairman ensured that the oral proceedings would proceed properly despite the diffuse, unstructured and confusing submissions made by the Appellant [applicant in the review procedure]."
In the case of a reasoned request for review, "the Enlarged Board of Appeal ... may order that members of the Board of Appeal who participated in the annulled decision are to be replaced" (Rule 108 (3) EPC, second sentence). The use of "may" ("peut" and "may" in French and English, respectively) means that replacement of members is at the discretion of the Enlarged Board of Appeal. From this granting of discretion, it can be concluded that the legislature did not share the applicant's view that, in the event of a justified request for review due to violation of the right to be heard, members of the Chamber must be replaced without further ado.
When exercising discretion, it is important that the applicant merely asserted the abstract risk of a lack of neutrality on the part of the members of the Chamber on the basis of the accusation of hearing impairment, but did not raise any specific objections against the members on the basis of their personal behavior.
The Enlarged Board of Appeal is of the opinion that, unless the contrary is proven in a specific case, it can be assumed that members of boards of appeal are generally performing their official duties correctly, in particular when a decision in proceedings under Article 112a (2) c) EPC is set aside will continue to examine the case objectively because of a serious violation of the right to be heard. The applicant's reasoning therefore does not support the application made.
From the point of view of the Enlarged Board of Appeal, a replacement of members of the Chamber would also come into consideration if the hearing impairment in the present case were so serious that it could be expected that the board in the composition in which it made the decision would again commit a serious hearing impairment would. However, the facts of the case offer no evidence for this, and the parties involved have not made any such claims.
5. Reimbursement of the fee for the review request
In this respect, the Enlarged Board of Appeal R 21/11 follows, where it says (under No. 31):
The fee for the request for review is to be reimbursed even though the applicant's request for replacement of the Board of Appeal members is unsuccessful and, in the present decision, the requests made by the applicant as part of her request for review are only partially granted. According to Rule 110 EPC, the Enlarged Board of Appeal orders the reimbursement of the fee for a request for review if the proceedings before the boards of appeal are reopened. As soon as the condition for the reopening of the proceedings is met, the fee must be reimbursed.
Decision formula
For these reasons it is decided:
1. The contested decision is set aside.
2. The reopening of the proceedings before Board of Appeal 3.5.02 is ordered.
3. The fee for the request for review will be refunded.
4. The request to replace the members of the Board of Appeal who participated in the annulled decision is refused.
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