T 0803/12 - Rule 106 only in appeal

Key points

• The patentee insists that he was not given the opportunity to present oral arguments regarding Auxiliary Requests 1 to 7 before the Opposition Division. According to the OD, the same issue of insufficient disclosure affected the main request and all auxiliary requests in the same way.
• The patentee submitted an objection under Rule 106 EPC because his right to be heard had been violated before the opposition division. The Board confirms that Rule 106 EPC does not apply to substantial procedural violations during first instance proceedings. "[A]ccording to the case law of the Enlarged Board of Appeal, decisions of departments of first instance cannot be reviewed under Article 112a EPC, even where the fundamental right to be heard has been infringed during the proceedings before the first instance".
• The patentee insisted on a remittal. The Board "considers that Article 32 TRIPs does not limit the board's discretion concerning remittal" 
• " The board is not aware of any legal basis which would empower it to instruct the opposition division to correct the minutes. [] The minutes fall under the exclusive remit of the department before which the oral proceedings took place". 

Reasons for the Decision

2. Remittal (Article 111(1) EPC)

2.1 The appellant requested that, if the main request were held not allowable, the case be remitted to the opposition division for further examination of the first to seventh auxiliary requests as regards the ground for opposition according to Article 100(b) EPC. The appellant argued that the case had to be remitted, since a substantial procedural violation had occurred before the opposition division because this ground for opposition was, according to the appellant and contrary to the statement in point 3 of the minutes of the oral proceedings before the opposition division ("The chairman stated that the parties should present their arguments in detail and thoroughly since this objection applied equally to all pending requests"), only discussed in relation to the main request (see also the appellant's request for correction of the minutes dated 6 March 2012). The appellant argued that its right to be heard in respect of this ground in relation to the auxiliary requests had thereby been violated.

2.2 The board is not in a position to determine whether or not the statement in point 3 of the minutes was actually made. However, even assuming that a substantial procedural violation had occurred, according to Article 11 RPBA the board has no obligation to remit a case to the department of first instance if special reasons present themselves for doing otherwise.

2.3 There are indeed special reasons for not remitting the present case, in view of the following circumstances:

- The central issue concerning the ground for opposition according to Article 100(b) EPC as discussed in respect to the main request remained the same for each of the first to seventh auxiliary requests. The board noted that the additional features of claim 1 of each of the auxiliary requests did not replace the calculation of the TBRL as a function of the airplane's energy state and, therefore, did not enable the skilled person to carry out this calculation.

- The proceedings with a filing year of 1999 and a priority year of 1998 had already taken a long time and would be further delayed if a remittal were ordered by the board.

- According to the established case law, there is no absolute right to have an issue decided on by two instances (see also point 3 below).

- The respondent objected to a remittal.

2.4 The appellant further argued that during the appeal proceedings the respondent had filed documents CG1 and CG2, which represented significant evidence which the appellant was unable to have considered by two instances. The board notes, however, that the appellant agreed that CG1 and CG2 merely confirmed the common general knowledge of the skilled person and actually referred to these documents itself in support of its own arguments (cf. the letter dated 11 April 2016).

Further, the appellant referred to Article 32 of the Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS), which provides for judicial review of any decision to revoke a patent.

However, as stated in T 557/94 (point 1.3 of the reasons), the board considers that Article 32 TRIPs does not limit the board's discretion concerning remittal. The board is, in any case, empowered to decide on the merits of the case (Article 111(1) EPC, second sentence, first alternative) and is not restricted to the second alternative of Article 111(1) EPC, second sentence, i.e. to remit the case to the first instance even where it is considering revoking the patent for the first time (which is not the case here). This was confirmed in G 1/97 (OJ 2000, 322; see point 5 of the reasons). Therefore, the board does not accept this argument.

The further reference to Article 125 EPC also fails, since Article 111(1) EPC gives the board a discretionary power to not remit a case. Hence, there is no absence of a procedural provision in the EPC which would require the board to take into account, under Article 125 EPC, the principles of procedural law generally recognised in the Contracting States.

2.5 In view of the above, the board decided not to remit the case.

3. Objection under Rule 106 EPC

3.1 The appellant filed an objection under Rule 106 EPC (see point VII above). The appellant alleged that its right to be heard before the opposition division regarding the first to seventh auxiliary requests had been violated, and that this could not be rectified by giving it the right to be heard before the board of appeal. In this respect, the board notes that the appellant explicitly stated at the oral proceedings before the board that its right to be heard before the board had been fully respected.

3.2 The board dismisses the objection under Rule 106 EPC for the following reasons:

Rule 106 EPC requires that an objection in respect of a "procedural defect" be raised during the appeal proceedings. The "procedural defect" referred to in this rule is one of the procedural defects cited in Article 112a(2)(a) to (d) EPC and Rule 104 EPC. These procedural defects are all concerned with proceedings before the board and are attributable to a board. Therefore, and according to the case law of the Enlarged Board of Appeal, decisions of departments of first instance cannot be reviewed under Article 112a EPC, even where the fundamental right to be heard has been infringed during the proceedings before the first instance (cf. R 8/11, point 1.2 of the reasons, and R 20/10, point 2.1 of the reasons). In the present case, the alleged procedural defect, i.e. the violation of the appellant's right to be heard on the auxiliary requests during the opposition proceedings, is exclusively concerned with these proceedings.

The appellant did not argue otherwise, and, as noted above, at the oral proceedings before the board it stated that its right to be heard before the board had been fully respected.

3.3 For these reasons, the objection under Rule 106 EPC is to be dismissed.

4. Reimbursement of the appeal fee (Rule 103(1)(a) EPC)

4.1 According to Rule 103(1)(a) EPC the appeal fee shall be reimbursed "where the Board of Appeal deems an appeal to be allowable". Since this is not the case, the request for reimbursement of the appeal fee is to be rejected.

4.2 Further, the board notes that such reimbursement would also not equitable by reason of a substantial procedural violation.

According to the appellant, the ground for opposition according to Article 100(b) EPC was not discussed in relation to the first to seventh auxiliary requests, contrary to the statement under point 3 of the minutes of oral proceedings before the opposition division. Rather, this ground was only discussed in relation to the main request (see the appellant's request for correction of the minutes dated 6 March 2012). Consequently, its right to be heard before the opposition division in respect of this ground in relation to the auxiliary requests had been violated.

4.3 The board notes that the alleged substantial procedural violation only concerns the auxiliary requests, whilst the appeal is also against the decision in respect of the main request. Hence, a reimbursement of the appeal fee based on the alleged substantial procedural violation would not be equitable (Rule 103(1)(a) EPC).

5. Request to instruct the opposition division to correct the minutes of the oral proceedings before the opposition division

5.1 The board is not aware of any legal basis which would empower it to instruct the opposition division to correct the minutes, and nor has the appellant provided any. Further, as a matter of principle, since the board cannot have any knowledge of what was actually said during the oral proceedings before the opposition division, it is not in a position to give any instructions concerning the minutes. The minutes fall under the exclusive remit of the department before which the oral proceedings took place (see also Rule 124(3) EPC). The board agrees in this respect with the findings in T 508/08 (cf. points 1 and 2 of the reasons: "[I]f the first instance (in this case, the opposition division) sees fit to ignore its obligation, [board's note: i.e. to respond to a request for corrections of the minutes of the oral proceedings], there is nothing the board can do in this respect. The board has no power to compel the opposition division to discharge its obligations.") and in T 1198/97 (cf. point 7 of the reasons).

5.2 For these reasons, the request to instruct the opposition division to correct the minutes of the oral proceedings before the opposition division is refused.

Order

For these reasons it is decided that:

- The appeal is dismissed.

- The request for reimbursement of the appeal fee is rejected.

- The objection under Rule 106 EPC is dismissed.