R 0006/20 - (I) Review of decision to hold submission inadmissible

Key points

• The right to be heard under Art.113(1) EPC entails more than an obligation for the Board to listen to parties: the Board's decision should also show that your submissions were considered. However, can it be a violation of the right to be heard by a decision of the Board to hold a submission inadmissible? In such a case, the Board's written decision contains some consideration of the submission. 
• R 10/18 held that: "Article 113(1) EPC is infringed if the board does not address submissions that, in its view, are relevant for the decision in a manner adequate to show that the parties were heard on them, i.e. that the board substantively considered those submissions..."
• The Enlarged Board in the present case clarifies that "substantively considered"  means  "the Board considered the contents of those submissions", " with this consideration comprising matters - pertaining to admittance of facts, evidence and requests, and/or - relating to substantive law, i.e. the merits of a case."
• This headnote must be read in the context of the remaining part of the discussion. In particular, it does not mean that there is never a  violation of the right to be heard if a submission is rejected as inadmissible after having the (movant) party on the admissibility. 
• The Board " In section V.B.3.4.3 of the Case Law it is said: The following issues can not be considered in review proceedings: ... - whether to admit a new request (R 10/11, R 11/11, R 13/11, R 4/13) or a new document (R 10/09, R 17/11) under Art. 12 RPBA 2007; or under Art. 13(1) RPBA 2007 (R 1/13, R 4/14, R 6/17) ..."
• "In addition, in R 17/10 (in point 2.4 in fine), it was held: The admission of late-filed documents and/or other evidence is a matter for the board's discretion and, therefore, as such not subject to review under Article 112a EPC."
• However, CLBA V.B.3.4.3  also identifies a second line in the case law, as the Board notes: " The exercise of discretion is only subject to review if arbitrary or manifestly illegal (R 10/11 [point 5.2]), thereby involving a fundamental violation of the right to be heard (R 9/11 [point 3.2.3]; see also R 17/11" 
• " Under the essence of this case law, merely hearing a party on admittance does not suffice: the decision to not admit must be neither arbitrary nor manifestly illegal." 
• Notably, this means that the exercise of discretion by the Board on the admissibility of submissions is subject to review, though the standard of review is a high one, cf. G 7/93 r.2.6 for review by the Board of Appeal of a first-instance decision to hold a submission inadmissible. 
• In my view, the second line in the case law is clearly the right one. Not setting aside a decision of a Board of Appeal that holds a submission inadmissible on arbitrary or manifestly illegal grounds defeats the purpose of Art. 112a(2)(c) EPC.
• In the present case, the Enlarged Board acknowledges these two lines of case law but does not choose between them. The Enlarged Board applies both lines of case law, i.e. effectively reviews under the "neither arbitrary nor manifestly illegal" standard.
• "Under the essence of this case law, merely hearing a party on admittance does not suffice: the decision to not admit must be neither arbitrary nor manifestly illegal. These criteria are met in the case in hand: first, the applicable legal provision of Article 12(4) 2007 complies with both the principle of ex officio examination (Article 114(1)) and the right to be heard (Article 113(1) (see point 3.2.2(a) below), and, second, so does its application in the case in hand". 
•  I wonder if a referral under Art. 112 is possible to revolve the conflicting case law?  It would requite an extensive or dynamic interpretation of  Art.112. 

EPO 

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

https://www.epo.org/en/boards-of-appeal/decisions/r200006eu2

3. The second asserted procedural defect

The petitioner asserts that the non-admittance to the appeal proceedings of the submissions relating to public prior use, in particular documents D7, constitutes a fundamental violation of its right to be heard (Article 112a(2)(c) in conjunction with Article 113(1) EPC). This assertion touches upon both procedural and substantive law.

3.1 The EBA's case law on the review of substantive law under Article 112a EPC

3.1.1 The principle

In the "Case Law of the Boards of Appeal of the EPO", 10**(th) edition 2022 (hereinafter: "Case Law") under the heading: "[V.B.]3.4.3 No suspensory effect - review of substantive law excluded" the following principle is set out inter alia:

Under no circumstances may the petition for review be a means to review the application of substantive law. ... The Enlarged Board has no competence under Art. 112a EPC to examine the merits of the decision and to go into the substance of a case... It is not the purpose of petition for review proceedings to evaluate whether or not the reasons selected by the board are appropriate... ; the Enlarged Board cannot replace a board's substantive assessment with its own... The Enlarged Board cannot act as a third instance or second-tier appellate tribunal in petition proceedings...

3.1.2 Conclusions from the principle on the review of the exercise of discretion in the context of (non-) admittance

(a) Exercise of discretion not subject to review

In section V.B.3.4.3 of the Case Law it is said:

The following issues cannot be considered in review proceedings: ...

- whether to admit a new request (R 10/11, R 11/11, R 13/11, R 4/13) or a new document (R 10/09, R 17/11) under Art. 12 RPBA 2007; or under Art. 13(1) RPBA 2007 (R 1/13, R 4/14, R 6/17) ...

In addition, in R 17/10 (in point 2.4 in fine) it was held:

The admission of late-filed documents and/or other evidence is a matter for the board's discretion and, therefore, as such not subject to review under Article 112a EPC.

These decisions generally regard the right to be heard as complied with if the party concerned has had the opportunity to express itself sufficiently as to the exercise of discretion in balancing the criteria for admittance of late-filed submissions. Reviewing the exercise of discretion would amount to the reviewing of the application of substantive law, which was excluded under Article 112a EPC.

(b) Exercise of discretion subject to review if arbitrary or manifestly illegal

In the Case Law (idem) it is said:

Not being competent [not having jurisdiction] to decide on the merits of a case necessarily implies that the Enlarged Board has no power to control [review] the normal exercise a board makes of its discretion (R 10/09, see also R 6/17). The exercise of discretion is only subject to review if arbitrary or manifestly illegal (R 10/11 [point 5.2]), thereby involving a fundamental violation of the right to be heard (R 9/11 [point 3.2.3]; see also R 17/11 [point 10]). (Emphasis added.)

In R 6/17 it was held:

3.5 ...the exercise of discretion by a board of appeal is subject to only limited review. Thus, it is the task of the Enlarged Board to review whether the Board did not abuse its discretion in an arbitrary or manifestly illegal manner whilst respecting the petitioner's rights under Article 113(1) EPC.

R 9/11 reads:

3.2.1 ...Since both the decision to admit or not to admit a late-filed document and the decision to admit or not to admit a late-filed request are primarily discretionary decisions of the competent Board, they can only be reviewed to the extent that the way in which a Board exercised its discretion constituted a fundamental violation of Article 113 EPC. ...

3.2.3 Hence, the petitioner can succeed only if it can be demonstrated that the Board declined to admit auxiliary requests A and B into the proceedings arbitrarily or on grounds that were not relevant to the exercise of its discretion, thereby unlawfully depriving the petitioner of its right to have these requests admitted and discussed in full. ...

R 17/11, in point 10, the board held that the exercise of the discretion to admit a late filed document was, as a rule, subject to review only under the aspect of whether the board, in exercising its discretion, committed a fundamental violation of Article 113(1) (citing R 17/10, point 2.4 and R 10/09, point 2.3).

3.2 Application of the case law

3.2.1 Case law holding the exercise of discretion not to be subject to review (see 3.1.2(a) above)

The petitioner itself stated that it was heard on the admittance and the merits regarding its submissions on public prior use making it impossible for it to file an objection under Rule 106 EPC (see above, point V). Thus, applying this case law, which merely requires hearing the party on admittance, the right to be heard would be complied with and the EBA's scrutiny would stop here.

3.2.2 Case law holding the exercise of discretion to be subject to review (see 3.1.2(b) above)

Under the essence of this case law, merely hearing a party on admittance does not suffice: the decision to not admit must be neither arbitrary nor manifestly illegal.

These criteria are met in the case in hand: first, the applicable legal provision of Article 12(4) 2007 complies with both the principle of ex officio examination (Article 114(1)) and the right to be heard (Article 113(1) (see point 3.2.2(a) below), and, second, so does its application in the case in hand (point 3.2.2(b)).