T 2386/19 - The right to have an offered witness heard

Key points

• The invention is of a simplicity which makes it suitable for Paper C. 
• "The administration of liquids from many bottles, such as medicine bottles, normally requires that an accurately prescribed amount is measured. When a syringe is inserted through the bottle neck into the bottle to withdraw liquid, it is often difficult to see the graduations on the syringe body, especially when a bottle having a coloured glass is used. This may prevent a user from withdrawing an accurate amount of liquid from the bottle into the syringe in a single operation. Moreover, dipping the syringe into the liquid of the bottle coats the outside of the syringe body with medicine. This increases the risk of contamination of the liquid in the bottle by microorganisms from the syringe and the risk of spillages when withdrawing the syringe." 
• "The contested patent addresses these issues with a liquid dispensing apparatus as defined in claim 1 which comprises a bottle, a bottle neck liner and a flat-nosed syringe. An example thereof is shown in Figures 5 and 6 of the contested patent reproduced below.
• Link to the drawings of the patent: https://worldwide.espacenet.com/patent/drawing?channel=espacenet_channel-73d92b7d-1107-471a-978a-446cd6dabcd9
• You have to hold the bottle upside down, or at least tilted, to take the controlled amount of liquid out of it.
• 
  
• The opposition is based on an alleged public prior use.
• "At the first-instance oral proceedings, the opposition division of its own motion cast doubts for the first time on whether or not feature M6 was disclosed by the prior use. The [opponent] reacted to that by requesting to hear a witness to corroborate an alleged fact, namely that a "PP28 bottle neck [i.e. as used in the prior use]  [had] a diameter of 19.4mm"  []. This alleged fact was relevant to establish which sealing was achieved in the prior use between the bottle neck liner and the PP28 bottle neck and thus to assess if the prior use anticipated feature M6."
• M6: "A  bottle neck (24) [] which is located the bottle neck liner (2) [and] having a cylindrical body (8) sealingly engaged inside the bottle neck (24) such that liquid cannot flow between the bottle neck liner (2) and the bottle neck (24),"
•  "The opposition division did not grant the request for the hearing of a witness even though it had been made at the first available opportunity and the opposition division considered the outcome of the hearing to be relevant to the outcome of the case"
• Note, I think that the opponent also had indicated who the witness would be and why the witness would be able to give testimony on the contested fact.  
• "Hence, the refusal to hear the witness violated the appellant/opponent's right to be heard under Article 113(1) EPC and might have affected the outcome of the appealed decision. It follows that reimbursement of the appeal fee is equitable by reason of a substantial procedural violation (Rule 103(1)(a) EPC). "
• The Board also concluded that the interpretation of the OD of feature M6 was too narrow and had concluded that feature M6 was disclosed by the prior use and that claim 1 as granted was not new over the prior use. 
• The patent is revoked. 

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/en/boards-of-appeal/decisions/t192386eu1

4. Reimbursement of the appeal fee

4.1 At the first-instance oral proceedings, the opposition division of its own motion cast doubts for the first time on whether or not feature M6 was disclosed by the prior use. The appellant/opponent reacted to that by requesting to hear a witness to corroborate an alleged fact, namely that a "PP28 bottle neck could have a diameter of 19,4mm" (see point 4.1 of the minutes of the oral proceedings before the opposition division), or that it had indeed such a diameter, according to the correction of the minutes requested by the appellant/opponent and rejected by the opposition division. This alleged fact was relevant to establish which sealing was achieved in the prior use between the bottle neck liner and the PP28 bottle neck and thus to assess if the prior use anticipated feature M6.

4.2 The opposition division did not grant the request for the hearing of a witness even though it had been made at the first available opportunity and the opposition division considered the outcome of the hearing to be relevant to the outcome of the case (see appealed decision, point 29).

4.3 Hence, the refusal to hear the witness violated the appellant/opponent's right to be heard under Article 113(1) EPC and might have affected the outcome of the appealed decision. It follows that reimbursement of the appeal fee is equitable by reason of a substantial procedural violation (Rule 103(1)(a) EPC).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.

3. The appeal fee is reimbursed.