T 0042/19 - Appellate review of findings of fact (V)

Key points

• Board 3.2.01 indicates that it does not consider the hearing of witnesses a regular part of the task of a board of appeal. 
• In August 2020, it issued T 1418/17, where it held that "a board of appeal should only annul the evaluation of the evidence of a first-instance department and replace it with its own if [the first instance department] recognizably (i) has failed to address material considerations,  or (ii) has considered factors that are irrelevant to the case, or (iii) reveals a violation of the laws of thought, such as logical errors and contradictions in the reasoning” or there is a mistake in the application of the law (e.g. an incorrect standard of proof has been applied)." According to that decision, this followed from the ‘principle of free evaluation of evidence’ under the EPC.
• Board 3.2.02 replied in T 1604/16 of December 2020 that "if the criteria set out in T 1418/17 were applied so broadly, this would amount to a considerable restriction of a board's competence. This kind of restriction may well be found in some national jurisdictions where the last judicial instance only reviews questions of law and the review of findings of fact is very limited. If there are several instances of judicial review, legislators might limit the second or further instance's power of review. However, there is no basis in the EPC or established case law for such a broad restriction of the boards' competence. ... On the contrary, the boards have competence to review appealed decisions in full, including points of law and fact (see e.g. explanatory remarks to new paragraph 2 of Article 12 of the Rules of Procedure of the Boards of Appeal, OJ Suppl. 2/2020). This is in accordance with Article 6 of the European Convention on Human Rights, which stipulates that there must be at least one judicial instance that can review a case in full, i.e. the law and the facts, given that the boards of appeal are the only judicial body to review decisions by the departments of first instance of the European Patent Office (regarding Article 6 ECHR, see e.g. Guide on Article 6 of the European Convention on Human Rights, Council of Europe/European Court of Human Rights 2013, paragraph 84).” (emphasis added)."
• Board 3.2.01 maintained its position in T 0041/19 and T 0239/20 without further explanations.
• Meanwhile, G 2/21 (post) held in r.32 that: "The principle of free evaluation of evidence may not be used to disregard evidence per se insofar as [the evidence] is admissibly submitted and relied upon by a party in support of an inference which is challenged and is decisive for the final decision".
• The OD rejected the opposition in the present case, considering the alleged public prior use unproven. No witness was heard by the OD. The opponent requested the hearing of witness with the Statement of grounds, in connection with the same alleged prior use. This request is rejected under Art. 12(4) RPBA 2007: "the Board is convinced that the request to hear Ms X as a witness could and should have been submitted in the first-instance proceedings".
• Thereafter, the question of the manner and standard of review of the factual findings of the OD remained. "The Board agrees with decision T 1604/16 that the boards' power to review appealed decisions is not limited to points of law but extends to points of facts (see Reasons 3.1.7 referring to, inter alia, the explanatory remarks to new Article 12(2) RPBA 2020). Thus, a board has the power and a duty to overrule decisions not only on the grounds of an incorrect application of the law but also on the grounds of deficiencies in the fact-finding process. "
• This illustrates that judicial dialogue is essential for developing a body of high-quality case law. 
• The Board then obiter held that: "it is settled case law that a board is not obliged to take all the evidence anew and that parties do not have the right to have the taking of evidence repeated at their request before the board" (no case law references are given).
• The Board then turns to the standard of review: "The boards usually just review the way in which the evidence was taken by the departments of first instance and, where they do not find any deficiencies, apply the law on the basis of the facts found in the decisions."
• In the terminology used in common law, this is not a de novo review but a deferential one. In my view, the EPC does not prescribe a deferential standard of review, nor does any decision of the Enlarged Board. The phrase 'to review the appealed decision' does not exclude a de novo review. 
• "the principle of free evaluation of evidence, meaning that there are no firm rules on the probative value of the various types of evidence but that the deciding body [i.e. the opposition division] is entrusted with weighing up all the evidence and basing its decision on what it is then satisfied has been established, implies a degree of freedom comparable to the one referred to by the Enlarged Board of Appeal in decision G 7/93, Reasons 2.6. "
• G 7/93 r.2.6 is, of course, the favourite holding of Boards and readers of this weblog alike: "if an Examining Division has exercised its discretion under Rule 86(3) EPC 1973  = Rule 137(3) EPC] against an applicant in a particular case and the applicant files an appeal against the way in which such discretion was exercised, it is not the function of a Board of Appeal to review all the facts and circumstances of the case as if it were in the place of the first instance department, in order to decide whether or not it would have exercised such discretion in the same way as the first instance department."
• This reasoning of the Board seems an innovative proposal.
• "it is wise [for the Board] to similarly respect this freedom [of the OD], especially when taking into account that a board, except when only reviewing documentary evidence [i.e. especially if a witness was heard, or an expert, or an object was inspected], does not have the same first-hand impression of the probative value of a means of evidence as a department of first instance that has itself heard a witness or expert or inspected an object."
• The Board is well aware that a board, being a deciding body as well, is also entrusted with the weighing of evidence under the principle of free evaluation of evidence. As a consequence, it cannot be excluded that a board might come to a different conclusion than the body that issued the impugned decision. But being under the obligation to give reasons for its decision, the board must be able to convincingly demonstrate where the competent division erred.
• As a comment, evidence newly filed or taken in appeal can also be a reason for reversing a factual finding (and is not excluded under Art. 12(4) RPBA 2020).
• However, the Board might have a point that, if the evidence is the same, a decision of the Board reversing a factual finding of the OD needs substantiation on that point. Then still, does not necessarily mean that the Board must show a (clear) error of the first instance division. 
• "Where this is possible, one of the criteria set out in decision T 1418/17 will most probably be fulfilled. Where this does not seem possible, a board should think twice whether there really is a need to overrule the evaluation of evidence contained in the impugned decision. Thus, the Board can acknowledge much of the reasoning in decision T 1604/16 but is still convinced that the test set out in decision T 1418/17 gives valuable guidance for identifying cases where a board is prompted to set aside an impugned decision's evaluation and either apply its own evaluation of evidence or remit the case to the department of first instance. "
• "Respecting the [first instance] department's evaluation of evidence in the remaining cases would both reflect and justify the standing practice, as outlined above, that the boards are not obliged to and regularly do not take evidence themselves but instead review the fact finding done by the department that issued the decision under appeal." (underlining added)
• As a comment, standing practice does not mean that the practice is correct.*  Moreover, the Board's approach to taking evidence themselves (or not) should follow from the rules and not the other way around. 
• * I could cite a judgement of the ECHR on the right to a fair trial that forced The Netherlands to change a standing practice of the police (not much to the great enthusiasm of the police themselves), but my concern is not about the specific case but about the general principle that (efficient) judicial practices must comply with the procedural rights of parties and the right to a fair trial, not the other way around. 
  
• "it should be kept in mind that the evaluation of evidence only refers to establishing whether an alleged fact has been proven to the satisfaction of the deciding body. The discretion-like freedom referred to in point 3.5 above is restricted to this question and does not extend to the further question of how the established facts are to be interpreted and what the legal consequences are. Thus, the fear that a board's power to review decisions might be unduly limited is not shared."
• "The Board is convinced that in this case none of the aforementioned circumstances which would justify a review of the evaluation of evidence carried out by the opposition division can be identified in the reasoning which led to the conclusion that the alleged public prior use D18 was not sufficiently proven. The reasons are as follows."
  
  
• As a comment, admissibility of requests for the taking of evidence (e.g. hearing of a witness) and standard of review are distinct concepts. Under the RPBA, any requests for the taking of evidence should be presented (normally) in the initial appeal submission and be substantiated. The first step for a party to challenge a "standing practice" of the Board is to request a witness hearing in appeal in a timely and substantiated manner.

• EPO 

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/t190042eu1.html

Alleged public prior use of the GensuPen

3. The Board confirms the decision of the opposition division to dismiss the alleged public prior use D18 as not sufficiently proven.

3.1 The conclusion of the opposition division that the public availability of an insulin injection device marked with the name GensuPen according to the sample D18.13 before the priority date of the contested patent was not sufficiently proven was contested by the opponent, which requested a reversal of this decision and that the alleged public prior use be considered state of the art under Article 54(2) EPC.

3.2 Regarding review by a board of the evaluation of evidence carried out by a deciding body of first instance, the Board notes that the principle of free evaluation of evidence applies to all departments of the EPO and thus also impacts the review in appeal proceedings. Unless the law has been misapplied (e.g. application of the wrong standard of proof), a board of appeal should therefore overrule a department of first instance's evaluation of evidence and replace it with its own only if it is apparent from that department's evaluation that it:

(i) disregarded essential points,

(ii) also considered irrelevant matters or

(iii) violated the laws of thought, for instance in the form of logical errors and contradictions in its reasoning (see T 1418/17, Reasons 1.3).

3.3 The Board agrees with decision T 1604/16 that the boards' power to review appealed decisions is not limited to points of law but extends to points of facts (see Reasons 3.1.7 referring to, inter alia, the explanatory remarks to new Article 12(2) RPBA 2020). Thus, a board has the power and a duty to overrule decisions not only on the grounds of an incorrect application of the law but also on the grounds of deficiencies in the fact-finding process. However, it is settled case law that a board is not obliged to take all the evidence anew and that parties do not have the right to have the taking of evidence repeated at their request before the board. The boards usually just review the way in which the evidence was taken by the departments of first instance and, where they do not find any deficiencies, apply the law on the basis of the facts found in the decisions.

3.4 It is against this background that this Board, based on earlier decisions, undertook in T 1418/17 to formulate typical scenarios in which the evaluation of evidence by a body whose decision is to be reviewed should be overruled and where the evaluation of evidence by the deciding body should be respected, keeping in mind that the evaluation of evidence is a process that is first and foremost entrusted to the deciding body that has to weigh all the available and relevant evidence and, applying the correct standard of proof, has to decide whether, and give reasons why it is convinced that, a certain fact is to be considered proven or not. As the competent board in T 1604/16 stated, the evaluation of evidence is not, strictly speaking, a discretionary decision. However, the principle of free evaluation of evidence, meaning that there are no firm rules on the probative value of the various types of evidence but that the deciding body is entrusted with weighing up all the evidence and basing its decision on what it is then satisfied has been established, implies a degree of freedom comparable to the one referred to by the Enlarged Board of Appeal in decision G 7/93, Reasons 2.6. Thus, it is wise to similarly respect this freedom, especially when taking into account that a board, except when only reviewing documentary evidence, does not have the same first-hand impression of the probative value of a means of evidence as a department of first instance that has itself heard a witness or expert or inspected an object.

3.5 The Board is well aware that a board, being a deciding body as well, is also entrusted with the weighing of evidence under the principle of free evaluation of evidence. As a consequence, it cannot be excluded that a board might come to a different conclusion than the body that issued the impugned decision. But being under the obligation to give reasons for its decision, the board must be able to convincingly demonstrate where the competent division erred. Where this is possible, one of the criteria set out in decision T 1418/17 will most probably be fulfilled. Where this does not seem possible, a board should think twice whether there really is a need to overrule the evaluation of evidence contained in the impugned decision. Thus, the Board can acknowledge much of the reasoning in decision T 1604/16 but is still convinced that the test set out in decision T 1418/17 gives valuable guidance for identifying cases where a board is prompted to set aside an impugned decision's evaluation and either apply its own evaluation of evidence or remit the case to the department of first instance. Respecting the department's evaluation of evidence in the remaining cases would both reflect and justify the standing practice, as outlined above, that the boards are not obliged to and regularly do not take evidence themselves but instead review the fact finding done by the department that issued the decision under appeal.

3.6 Finally, it should be kept in mind that the evaluation of evidence only refers to establishing whether an alleged fact has been proven to the satisfaction of the deciding body. The discretion-like freedom referred to in point 3.5 above is restricted to this question and does not extend to the further question of how the established facts are to be interpreted and what the legal consequences are. Thus, the fear that a board's power to review decisions might be unduly limited is not shared.