T 1599/18 (I) - Right to be heard

 Key points

Right to be heard

• Patentee argues that “Auxiliary request 3 was to be admitted to the appeal proceedings "because the non-admittance in the first instance was a substantial violation against the right to be heard" 
• The Board, in the headnote: “ the right to be heard does not entail a right to an amendment, but a right to present comments on why a specific request should be admitted to the proceedings.”
• The Board explains this as follows: “ The right to be heard does not entail the right to an amendment. Amendments are regulated by Article 123(1) EPC, the Implementing Regulations (e.g. Rule 80, Rule 116 EPC, Rule 137(3) EPC), and the RPBA during appeal. In this particular case, the Opposition Division had the discretion to admit, or not, the amendment, under Rule 116(2) EPC. That a new objection is raised, and that the amendment potentially responds to that objection, are factors to be considered in the exercise of this discretion, which the Opposition Division did; it does not give rise to a right to an amendment in response to that new objection emanating from the right to be heard.”
• And finally at r.29 “As noted above, in points 16 et seq., the right to be heard does not entail a right to an amendment, but a right to present comments on why a specific request should be admitted to the proceedings. So the non-admittance of the requests as such cannot be a violation of the right to be heard.” emphasis added.
• As a comment, I strongly doubt that the headnote is correct where it implies that the right to be heard of Article 113(1) only entails the right to present comments on why a specific request should be admitted into the proceedings. If the OD does not admit a request only on the ground they want to finish oral proceedings early (the notorious alleged football match example can be found in Juve Rechtsmarkt 07/14, p.63), this is an abuse of discretion. However, it does not seem helpful on a theoretical level to analyse "abuse of discretion" without considering the party's rights involved. Infringement of a party's right and abuse of discretion seem two sides of the same coin. 
• Obviously, with the proposed reasoning non-admittance of requests by the Board will no longer be a ground for a petition for review under Article 112a(2)(c) if the Board gave you an opportunity to present arguments why the request should be admitted, even if the Board then holds the request inadmissible in an arbitrary, capricious, or unreasonable way. We will have to see what the Enlarged Board makes of Art.112a(2)(c).
• The Board's remarks seem obiter because they first find that  “the Board does not see that the Opposition Division exercised its discretion on the basis of incorrect principles or in an unreasonable way. They exercised the discretion provided under Rule 116(2) EPC, on the basis that, although the amendments filed during the oral proceedings were a response to objections under Article 123(2) EPC for a previous request filed in preparation for the oral proceedings, this new request could and should have been filed earlier. This is because the proprietor should have expected the Article 123(2) EPC objections, given that no literal basis was provided for the amendments in the previously filed request.”
  
  
• As to the admissibility of another request that was held inadmissible by the OD: “It also appears that the timing of the filing was very late (during the oral proceedings) and that the new claims were based not only on the granted claims but contained new matter from the description. ... The Opposition Division exercised its discretion on the basis of these facts, which hold true and are pertinent to the exercise of discretion. The Board finds that the Opposition Division exercised its discretion in accordance with the right principles and in a reasonable way. The Board therefore has no reason to overturn this decision (see G 7/93 2.6”

T 1599/18 -

https://www.epo.org/law-practice/case-law-appeals/recent/t181599eu1.html

15. Hence claim 1 of this request lacks novelty over E2.

Auxiliary request 3

16. As with auxiliary request 1, the Board does not see that the Opposition Division exercised its discretion on the basis of incorrect principles or in an unreasonable way. They exercised the discretion provided under Rule 116(2) EPC, on the basis that, although the amendments filed during the oral proceedings were a response to objections under Article 123(2) EPC for a previous request filed in preparation for the oral proceedings, this new request could and should have been filed earlier. This is because the proprietor should have expected the Article 123(2) EPC objections, given that no literal basis was provided for the amendments in the previously filed request.

17. The appellant argues that the objections under Article 123(2) EPC were only raised during oral proceedings before the Opposition Division, and that the proprietor should have had the opportunity to react by amendment. Auxiliary request 3 was to be admitted to the appeal proceedings "because the non-admittance in the first instance was a substantial violation against the right to be heard" (letter of 21 April 2021, page 8).

18. The Board disagrees. The objections could not have been raised earlier, given the timing of the filing of the previous request.

18.1 Then, a party has a right to be heard. Pursuant to Article 113(1) EPC:

"The decisions of the European Patent Office may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments."

18.2 The Board however cannot find any suggestion in the statement of grounds of appeal of a denial of the appellant's opportunity to present their comments on the admittance of auxiliary request 3. (Cf. R 1/13, points 9-10).

18.3 Furthermore, although the minutes are silent on that point, the appellant stated during the Oral Proceedings before the Board that they had had the opportunity to explain the amendments when introducing the requests during the oral proceedings before the Opposition Division. This means that the opportunity to present arguments for admittance was given.

18.4 The right to be heard does not entail the right to an amendment. Amendments are regulated by Article 123(1) EPC, the Implementing Regulations (e.g. Rule 80, Rule 116 EPC, Rule 137(3) EPC), and the RPBA during appeal. In this particular case, the Opposition Division had the discretion to admit, or not, the amendment, under Rule 116(2) EPC. That a new objection is raised, and that the amendment potentially responds to that objection, are factors to be considered in the exercise of this discretion, which the Opposition Division did; it does not give rise to a right to an amendment in response to that new objection emanating from the right to be heard.

19. The Board has therefore no reason to overturn the decision of the Opposition Division. This request is consequently not admitted (Article 12(4) RPBA 2007).

Auxiliary requests 2a and 3a

20. These requests were only filed with the grounds of appeal. The appellant explained that they were filed in view of the "weak" point in the decision concerning the novelty of alternative b), wherein it was acknowledged that E2 was not very detailed in this respect.

21. The Board is of the opinion that, as a discussion regarding both alternatives took place during the oral proceedings before the Opposition Division, which fact the appellant did not contest, that was the point at which these requests should have been filed, because the allegedly weak point should have been apparent then.

22. The Board consequently decides not to admit these requests under Article 12(4) RPBA 2007.

23. The board also notes that the deletion of the a) alternative cannot change the novelty assessment (see discussion on Auxiliary Request 2).

Auxiliary requests IV and V

24. These requests were filed after the summons to oral proceedings by the Board. Their admittance is regulated by Article 13 RPBA 2020. According to the appellant, the submissions were in reaction to the provisional opinion of the Board, finding with respect to auxiliary request 2 that alternative b) might be seen as anticipated by E2. Although this was already part of the impugned decision, the Board's communication "informed for the first time how the respective disclosure [of E2] is read on feature [b]" (see page 2 of the letter of 21 April 2021).

25. Even if this were true, the fact remains that the objection was already present in the impugned decision. The appellant should have filed such amendments at the latest upon filing the appeal.

26. Notwithstanding, the Board also does not see that the amendments clearly overcome the novelty objection.

26.1 Concerning the amendments in auxiliary request IV, that extracted values are stored in a database, this may also be seen as a clearly derivable embodiment of E2 (see discussion on auxiliary request 2).

26.2 Furthermore, even if that were not the case, although it is clear that a conventional fingerprint image (black and white or grayscale) is not multispectral, it is not clear when, in general, an image is non-multispectral in the sense of the patent in suit. As discussed in the related case T 1598/18, a multispectral image, in the sense of the patent in suit, may simply be a set of images taken under different optical conditions. Paragraph 97 of the patent in suit seems to define non-multispectral images as "images taken with other imaging technology", which is quite vague, and not really distinguishable from a set of image layers. This definition of non-multispectral images may be taken to encompass, for instance, images taken with the technology of E2, if that is considered to be "other imaging technology", in which case paragraph 73 of E2 would anticipate the claim.

26.3 Concerning the further amendment in auxiliary request V, the appellant admits that E2 "may disclose" those features in its Figure 1, elements 103a, 103b and 107a, 107b (letter of 21 April 2021, page 9, section 5, 3**(rd) sentence). The Board is of the opinion that prima facie E2 does indeed disclose those features; this amendment does not appear to confer novelty over E2 either.

27. Hence the Board decides not to admit these requests (Article 13(1) RPBA 2020).

Substantial procedural violation

28. The appellant alleged that there "was a substantial violation against the right to be heard" (see page 8 of the letter of 21 April 2021) because of the non-admittance of auxiliary requests 1 and 3.

29. As noted above, in points 16 et seq., the right to be heard does not entail a right to an amendment, but a right to present comments on why a specific request should be admitted to the proceedings. So the non-admittance of the requests as such cannot be a violation of the right to be heard.

Order

For these reasons it is decided that:

The appeal is dismissed.