T 0660/16 - Review of case-management measure

Key points

• "On appeal, the patent proprietor argued that the opposition division should not have heard the witness. " 
• "Opponent 1 argued that the opposition division's decision to hear the witness could not be contested." 
• "Contrary to the view of opponent 1, the board has to examine the patent proprietor's request to review the correctness of this part of the opposition division's decision. An order to take evidence is neither an appealable decision under Article 106(1) EPC nor an interlocutory decision allowing a separate appeal within the meaning of Article 106(2) EPC. Instead, it is a case-management measure that precedes a substantive decision and cannot be reviewed as long as the proceedings are still pending. The review may occur once a substantive decision (in this case the opposition division's interlocutory decision referred to at point I. above) is issued (Case Law of the Boards of Appeal of the EPO, 9th edition, 2019, Chapter V.A.2.2.2 b)(xiii))." 
• That paragraph in the CLBA cites just one decision: T 1954/14  (post). That case was an appeal against a summons by the OD to hear a witness. The appeal was rejected as inadmissible. In my view, that is not quite the same as a decision that the decision to summon a witness, can be challenged in appeal.
• Article 106(2) indeed provides that "a decision which does not terminate proceedings as regards one of the parties can (...) be appealed together with the final decision (...)" (omitting the part about leave to appeal), but I'm not sure if this covers a case management "measure" as such (note, the Board does not say "case management decision"). On the other hand, where a case management decision/order/measure results in a substantial procedural violation, this may be a ground for setting aside the substantive decision. 
• Assuming for the moment that the Board meant to review the first instance proceedings for an alleged substantial procedural violation, a further issue is that there must both have been a procedural error of the OD, and an adverse effect of that error for the patentee. Harmless errors do not amount to a substantial procedural violation. I'm not sure if hearing a witness as such can adversely affect a party, provided that the parties are given enough time to comment on and rebut the evidence given by the witness.
• The Board also reviewed the substance of the factual findings by the OD regarding the public prior use.
• As a separate issue, if the order to take evidence was an interlocutory decision not including a leave for separate appeal, the present case illustrates that the phrase  "only be appealed together with the final decision" in Art.106(2) in fact may mean "may be appealed with the next interlocutory decision that includes a leave to appeal" - in the present case, the proprietor should indeed not have waited for the final decision of the OD to maintain the patent in amended form after the payment of the fee and filing of the translated amended claims of Rule 82. 
• On inventive step over the public prior use: "the product of the public prior use would have been available to the skilled person in May 2006. There is nothing that would prevent the skilled person from using a real product, with all its features established above, as the closest prior art."
• "The board fails to see an inventive step in adjusting the moisture content to a range that is conventional in the field of manufacturing pellets and that is not associated with a technical effect."
• 
  

EPO T 0660/16 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t160660eu1.html

4. Hearing of the witness before the opposition division

4.1 At the oral proceedings on 3 February 2015, the opposition division, enlarged by the addition of a legally qualified examiner, took evidence by hearing of the witness, Mr. Paul de Pauw. The witness's evidence is recorded in the minutes of the taking of evidence.

4.2 On appeal, the patent proprietor argued that the opposition division should not have heard the witness. In its view, the opposition division had made the hearing of the witness conditional upon opponent 1 making a deposit of an advance payment which, however, had not been made in time.

Opponent 1 argued that the opposition division's decision to hear the witness could not be contested.

4.3 Contrary to the view of opponent 1, the board has to examine the patent proprietor's request to review the correctness of this part of the opposition division's decision. An order to take evidence is neither an appealable decision under Article 106(1) EPC nor an interlocutory decision allowing a separate appeal within the meaning of Article 106(2) EPC. Instead, it is a case-management measure that precedes a substantive decision and cannot be reviewed as long as the proceedings are still pending. The review may occur once a substantive decision (in this case the opposition division's interlocutory decision referred to at point I. above) is issued (Case Law of the Boards of Appeal of the EPO, 9th edition, 2019, Chapter V.A.2.2.2 b)(xiii)).

4.4 On the substance of the patent proprietor's lines of argument, the board set out the following in its communication (points 7.4.1 to 7.5):

"7.4.1 The opposition division has the discretion to consider evidence which is provided after the commencement of the opposition proceedings (Article 114(2) EPC). In this case, the opposition division deemed it necessary to consider the evidence (i.e. to hear a witness) which opponent 1 offered during the opposition proceedings. With date of 11 August 2014, the opposition division issued an order to take evidence by hearing the witness in accordance with Rule 117 EPC and it summoned the witness in accordance with Rule 118 EPC.

7.4.2 The taking of evidence was made conditional upon opponent 1 making a deposit of an advance payment to secure payment of the costs arising from any possible reimbursement of the witness. Alternatively, a waiver of cost signed by the witness could be filed. The order further states that the 'deposit/waiver should be made/filed within one month from notification of this order.' (bold text in the original)

The advance payment is not an administrative fee. Requesting an advance payment (or a waiver of costs) is part of the EPO's case management when witnesses are heard. The EPO uses the deposit to reimburse the witness for the costs it may incur such as travel, subsistence and compensation of loss of earnings (Rule 122(1) to (4) EPC). Failure to provide the advance payment in time does not have any direct and immediate legal consequence. Neither the EPC nor the order itself states such a legal consequence.

7.4.3 The patent proprietor argued also that there was no record in the public part of the file that the witness would be present for the taking of evidence and that it had the expectation that the witness would not be heard at the oral proceedings.

However, the apparent failure of the witness to react to the summons to taking of evidence under Rule 118 EPC, does not appear to be relevant. It is manifest from the order to take evidence that the opposition division had the intention to hear the witness. The patent proprietor had to expect that at the oral proceedings the witness, if present, would be heard, as had been the case in T 2003/08 (Reasons for the decision, points 31 to 33).

7.4.4 The patent proprietor alleged that before the oral proceedings and before the taking of evidence it had not been aware of what the witness was supposed to attest to.

This is not persuasive. On page 2 of the order to take evidence, the matter on which evidence was to be taken is set out, in particular the specific circumstances relating to the sale and delivery of the product P5106 AMYTEX 106 and features of the allegedly sold product and whether members of the public not being under an obligation of secrecy could acquire knowledge of the relevant features.

Therefore, the patent proprietor was or at least should have been aware, before the oral proceedings and before the taking of evidence, what the witness was supposed to attest to.

7.4.5 The patent proprietor finally referred to some board of appeal decisions ... and argued that the witness had been used to fill factual gaps in the evidence.

However, the present case relating to the prior use turns around the written evidence filed as D4 and D31 to D39. Hearing of witnesses is explicitly foreseen in Article 117(d) EPC as a means of evidence. Although the function of a witness is to corroborate what has been alleged and not to fill in the gaps in facts, additional clarifications provided by a witness to close a potential gap in the documentary evidence on file cannot be considered per se new facts; hearing a witness would otherwise be futile (Case Law of the Boards of Appeal of the EPO, 9th edition, 2019, Chapter III.G.2.2.1).

Moreover, neither the patent proprietor's statement of grounds of appeal nor its submissions filed under cover of a letter dated 12 September 2016 appear to explain what are the facts that the patent proprietor regards as being introduced into the proceedings by the witness to fill gaps. In its statement setting out the grounds of appeal, the patent proprietor also states 'in fact the oral testimony did not appear to add any further information that was missing from the written evidence' (page 9, fourth paragraph).

7.5 Thus, the board cannot identify any flaws in the hearing of the witness and sees no reason to disregard on appeal the evidence provided by the witness, in particular the minutes of the taking of evidence."

4.5 The patent proprietor made no further submissions on this issue.

4.6 The board has no reason to review its preliminary opinion. Therefore it concludes that the witness's evidence, in particular the minutes of the taking of evidence, is part of the appeal proceedings.