Key points
- Credits to T. Schürmann and M. Wachenhausen for highlighting this decision in epi Information 3/2022.
- The Board, in translation: "It is not possible to state in general how many starting points an opposition division has to take into account when examining inventive step. The answer to this question depends on the circumstances of each case, in particular on the distinguishing features of the different starting points proposed."
- "However, it is clear that in practice only a limited number of lines of attack can be examined. An opponent is therefore required to select from the multitude of possible starting points those which, in his opinion, most clearly call into question the patentability of the claimed subject-matter. If the number of attacks exceeds a reasonable level, an opposition division must have some discretion"
- As a comment, it would be useful if the Board had identified the legal basis for this discretion. Article 114(2) EPC only refers to facts or evidence not submitted "in due time".
- However, in the present case, the OD's had not correctly exercised this discretion.
- The opponent had presented two inventive step attacks in the Notice of opposition, one starting from F3 and the other from F5. The OD in the preliminary opinion considered F4 to be the closest prior art.
- During the oral proceedings, the OD had decided that F5 was the closest prior art and had forbidden the opponent to present arguments regarding its attack starting from F3. In the written decision, the attack starting from F5 as well as the attack starting from F3 was considered by the OD." In the case of document F3, [the OD] only took into account the opponents' written submissions. It prevented the opponent from using any document other than document F5 as a starting point for examining inventive step during oral proceedings, relying on the third paragraph of Section G-VII, 5.1 of the Guidelines"
- ""When choosing the F5 as the closest prior art, the chairman of the opposition division pointed out that this choice determines the sole starting point.
- "Since the decision acknowledges the arguments put forward in the written procedure based on F3, the opposition division is of the opinion that the right to be heard of the opponents has not been violated (Article 113(1) EPC)."
- The Board: "the opposition division should have given the opponents the opportunity during the oral proceedings to comment orally on the attack based on document F3 and on the opposition division's preliminary view expressed in the summons." "In this context, it is noted that the right to be heard under Article 113(1) EPC is not already fulfilled if a party who has requested oral proceedings under Article 116 EPC has only been able to submit comments in writing (see T 1077/06, points 10 and 14 of the reasons for the decision). Under the circumstances, the passage of the Guidelines cited by the opposition division cannot justify denial to the [opponent] to comment at the oral proceedings on inventive step on the basis of document F3. It is also not clear from items 23 and 24 of the minutes that there was any discussion of the relevance of other starting points at all. The opposition division's refusal to hear the opponent on those points before the opposition was rejected, constitutes a violation of the right to be heard"
7. Refund of Appeal Fee
Pursuant to Rule 103(1)(a) EPC, the appeal fee is reimbursed in full if the appeal is allowed by the Board of Appeal and the reimbursement is equitable because of a substantial procedural violation. Since the Board allows the appeal, it remains to be examined whether the first instance proceedings are vitiated by a substantial procedural violation. In this context, the applicant submitted that her right to a fair hearing had been violated.
7.1 Facts
In their notice of opposition dated January 12, 2018
the opponent (now: appellant) raised several objections to the patent. In particular, it argued that documents F2 and D4 anticipate the subject-matter of claims 1, 7 and 10 in a manner detrimental to novelty and that the subject-matter of claim 1 is not inventive over the combination of documents F3+F4 and F5+D7 respectively.
In the notice of summons dated September 27, 2018, the opposition division presented its preliminary view on these attacks. In particular, it stated that
- that publications F2 and D4 are not detrimental to novelty (see points 6.1 to 6.3),
- that the expert would not have combined documents F3 and F4 (point 7.5.2),
- that document F5 appears essentially equivalent to document F4, but that the latter is closer to the subject-matter of the patent in suit (point 7.7),
- that it is clear from documents F4 and F5 that multiple sealing of a decorative layer was not an unusual measure for a person skilled in the art on the priority date of the patent, and
- that the subject-matter of claim 1 was therefore not inventive (point 8).
In the decision under appeal, the opposition division found the novelty objections based on documents F2 and D4 to be unfounded (see points 4.1 to 4.4 of the reasons for the decision). In addition, it examined the inventive step based on documents F3 and F5 (see points 9 and 10 of the reasons for the decision). In the case of document F3, it only took into account the opponents' written submissions. It prevented the opponent from using any document other than document F5 as a starting point for examining inventive step during oral proceedings, relying on the third paragraph of Section G-VII, 5.1 of the Guidelines for Examination at the EPO appointed (see point 11 of the reasons for the decision):
"However, carrying out the problem-solution approach from different starting points, e.g. starting from different prior art documents, is only necessary if it has been convincingly shown that these documents represent equivalent starting points. Especially in opposition proceedings, the structure of the problem-solution approach, there is no forum in which the opponent can develop any number of inventive step attacks in the hope that one of them will succeed (T 320/15, Reasons, point 1.1.2)."
In addition, point 11 of the reasons for the decision contains the following statements:
"When choosing the F5 as the closest prior art, the chairman of the opposition division pointed out that this choice determines the sole starting point.
Since the decision acknowledges the arguments put forward in the written procedure based on F3, the opposition division is of the opinion that the right to be heard of the opponents has not been violated (Article 113(1) EPC)."
Points 23 and 24 of the minutes of the oral proceedings under Rule 124 EPC are also relevant in this context:
"23. The opponent announced that it wished to submit further arguments with another document as the closest prior art relating to inventive step. Relying on decisions T308/9 [sic] and T1261/14 of the Board of Appeal, the opponent claimed that there were several Starting points with different closest prior art allowed for the assessment of inventive step.
24. The chairman reminded the opponent that F5 was identified as the closest prior art by the opposition division. The opposition division announced that it would therefore not admit any further document or reasoning in the proceedings (Guidelines for Examination in the EPO, Part G, Chapter VII, 5.1. 3rd paragraph)."
7.2 Assessment of the opposition division's approach
It is not possible to state in general how many starting points an opposition division has to take into account when examining inventive step. The answer to this question depends on the circumstances of each case, in particular on the distinguishing features of the different starting points proposed. However, it is clear that in practice only a limited number of lines of attack can be examined. An opponent is therefore required to select from the multitude of possible starting points those which, in his opinion, most clearly call into question the patentability of the claimed subject-matter. If the number of attacks exceeds a reasonable level, an opposition division must have some discretion
In the present case, the opposition division examined two different starting points, namely documents F3 and F5, which were chosen by the opponent as appropriate starting points for the discussion of the question of inventive step.
The question arises as to why the opposition division did not choose document F4 as a starting point, although it had stated in point 7.7 of its summons that it was closer to the subject-matter of the patent in suit than document F5. It should be noted that, according to point 14 of the minutes of the oral proceedings before the opposition division, the opponent had argued "that document F5 thus constitutes a better closest prior art in comparison with documents F3 and F4 selected in the written procedure" and this too had been confirmed by the patent proprietor (see point 15 of the minutes). In this context, the board notes that the principle of ex officio investigation is to be applied more restrictively in proceedings before the opposition division than in examination proceedings.
The restriction to documents F3 and F5 as starting points, chosen by the opponent, could therefore be considered justified. However, the opposition division should have given the opponents the opportunity during the oral proceedings to comment orally on the attack based on document F3 and on the opposition division's preliminary view expressed in the summons. In the present case, neither the decision nor the minutes of the oral proceedings explain why the opposition division no longer considered document F4 relevant and why the opponent was not allowed to present its arguments orally on the basis of document F3. In this context, it is noted that the right to be heard under Article 113(1) EPC is not already fulfilled if a party who has requested oral proceedings under Article 116 EPC has only been able to submit comments in writing (see T 1077/06, points 10 and 14 of the reasons for the decision). Under the circumstances, the passage of the Guidelines cited by the opposition division cannot justify the appellant's refusal to comment at the oral proceedings on inventive step on the basis of document F3. It is also not clear from items 23 and 24 of the minutes that there was any discussion of the relevance of other starting points at all. The opposition division's refusal to hear the opponent before the opposition was rejected
7.3 Conclusion
Since there is a fundamental procedural violation, the reimbursement of the appeal fee is equitable.
decision formula
For these reasons it is decided:
1. The contested decision is set aside.
2. The patent is revoked.
3. The appeal fee is refunded.
In a case where the claim has novelty but Opponent is unable to discern what is the most realistic prior art starting point for the obviousness attack, asserting that there are multiple starting points that are all equally promising, then Opponent damages their own credibility, the persuasiveness of their own case. That there was a multiplicity of good prior art starting points and yet still nobody took the step suggests that the step wasn't obvious at all.
ReplyDeleteThere is English case law on the point but I forget the name of the case. If I remember right, the analogy is with a shooting target that exhibits multiple near misses but no one shot hitting the Bullseye.
Thus, it is entirely reasonable for an OD or a TBA at the commencement of oral proceedings to require an Opponent to pick their best starting point, and argue from there.
Self interest is always the best motivator. Boards should in their decisions reveal to advocates what lines of argument are harming rather than helping the interests of their clients.
As to whether an OD or TBA can *require* an opponent to pick their best starting point, I have to acknowledge R 5/13. Which is not the same as saying that I find that decision persuasive. In view of T 2179/16, however, an opponent may be wise to reply to the OD that all attacks are fully maintained, in my view.
DeleteThe term "multiple starting points" (aka multiple closest prior art) sounds oxymoric. The superlative "closest" implies the selection of a single starting point, if multiple starting points have to be considered, no starting point is "the closest". I agree with MaxDrei that the opponent loses credibility by using multiple starting points. In addition, accepting multiple starting points on the EPO side undermines the very logic of the CPA. This seems utterly incompatible with the "would vs could" step.
ReplyDeletePlus, the premise that for the EPO to be "user-friendly" should imply babysitting the parties. I consider it is entirely appropri
parties must
There is a premise
An underlying premise on this issue must be discussed.
Dear Mr. Hagel, I'm afraid the last part of your comment was malformed. The phrase "multiple starting points" sounds fine to me, and as having a subtle difference in meaning with "multiple closest prior art". Whether or not opponents lose credibility by using multiple starting points seems fact-specific to me (e.g. if claim interpretation is a point of debate) and less relevant for the legal question whether the Board or OD can disregard the inventive step attacks in such a case.
Delete@Peter
ReplyDeleteThanks for your response and sorry for the mishap. Here is the correct comment :
I agree with MaxDrei.. I think the term « multiple starting points » is an oxymor. The starting point in the PSA is the closest prior art. « closest » is a superlative, there can only be one closest prior art.
The opponent loses credibility by multiplying challenges on the basis of the PSA, I would also say the OD or BOA undermines the credibility of the PSA itself if they allow multiple challenges based on different starting points.
As to the opponent’s request to maintain multiple challenges, I think the EPO’s refusal is justified. The right to be heard has its limits as any right, it must not be abused. If it is a good thing that the EPO shows willingness to be « user-friendly », this does not imply that the EPO must baby-sit the parties. An opponent is free to launch a inventive step challenge based on another prior art than the CPA (within the PSA), but then the opponent has to convince the OD or BOA that a challenge outside the PSA is admissible, and this is uphill battle.
Looking at the decision, it is of note that it offers no discussion of the relevance of the different starting points on the merits. Only formal matters are discussed.