T 0433/21 - (II) Habermas and the Enlarged Board

Key points

•  The Board, in this case, decided to refer no questions to the Enlarged Board.
• "The Board agrees [with the appellant] that the issue is relevant to the specific case at hand, but not to the European patent system in general."
• "As an additional consideration, the Board notes that the above criteria for a referral as set out in G 1/12 were written from the perspective of the body to whom the case was referred (the Enlarged Board of Appeal) and concerned the question of admissibility of the referral. From the point of view of the referring Board, admissibility of a referral is of course a necessary prerequisite. However, this does not mean that every referral that would be admissible must necessarily be made. Rather, the decision to refer is a discretionary one (Bühler, in: Singer/Stauder, Europäisches Patentübereinkommen, 8th ed. 2019, Art. 112 note 16). However, where a Board wants to deviate from an earlier decision of the Enlarged Board, it should refer the question (stipulated in Art. 21 Rules of Procedure of the Boards of Appeal for reasons of comity)."
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• "The fact that this is not a Common Law jurisdiction allows for contradictory decisions to coexist. The disadvantage thereof may - to a certain extent and for a limited time - be offset by the possibility of different Boards engaging in a non-coercive discourse with each other. A non-coercive discourse ("herrschaftsfreier Diskurs") according to Wolfgang Habermas (elaborated in "Theorie des kommunikativen Handelns" 1981) has as its object a decision through the persuasive force of the best argument. It requires equal partners in a communication, an equal opportunity to be heard and a symmetrical situation, all of which is given when different Boards, which are not in a hierarchy amongst each other and are equally competent to interpret the EPC, decide on the same question of law and are forced to come up with better arguments when contradicting each other. Ideally, a sequence of such decisions can then lead to a common understanding as to the best argument and the best answer to a given legal problem. "
• "A Board may therefore refrain from making a referral in the belief that its own decision, as part of a non-coercive discourse, will lead to a commonly accepted answer to a certain legal problem. Particularly in cases where a problem has only recently been identified, a non-coercive discourse may be helpful in arriving at a commonly accepted answer or in providing an argumentative basis for a future referral."
  
  
• For the substance of the case, see this earlier post. 
• At the time of writing, the Boards seem to be engaged in a herrschaftsfreier Diskurs on claim interpretation. 
  
  
• A related point is the Hart-Dworkian debate, in particular, whether it is correct that "The set of (...) valid legal rules is exhaustive of ‘the law,’ so that if someone’s case is not clearly covered by such a rule (because there is none that seem appropriate, or those that seem appropriate are vague, or for some other reason) then that case cannot be decided by ‘applying the law.’ It must be decided by some official, like a judge, ‘exercising his discretion.’"? (Dworkin, stating what he considers to be Hart's position, in “The Model of Rules I,” 17 as cited by Shapiro in The Hart-Dworkin Debate: A Short Guide for the Perplexed). In other words, does the Enlarged Board tell us what the law is (and always was) or do they create it on the fly? Especially in the latter case, a preceding sequence of decisions of the Technical Boards of Appeal, prior to the referral, can be helpful to clarify the issue and to better develop respective views, which may help the Enlarged Board of Appeal to settle the debate. 

EPO 

The link to the decision and (an extract of) the decision text are provided after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t210433eu1

8.4 As an additional consideration, the Board notes that the above criteria for a referral as set out in G 1/12 were written from the perspective of the body to whom the case was referred (the Enlarged Board of Appeal) and concerned the question of admissibility of the referral. From the point of view of the referring Board, admissibility of a referral is of course a necessary prerequisite. However, this does not mean that every referral that would be admissible must necessarily be made. Rather, the decision to refer is a discretionary one (Bühler, in: Singer/Stauder, Europäisches Patentübereinkommen, 8th ed. 2019, Art. 112 note 16). However, where a Board wants to deviate from an earlier decision of the Enlarged Board, it should refer the question (stipulated in Art. 21 Rules of Procedure of the Boards of Appeal for reasons of comity). The fact that this is not a Common Law jurisdiction allows for contradictory decisions to coexist. The disadvantage thereof may - to a certain extent and for a limited time - be offset by the possibility of different Boards engaging in a non-coercive discourse with each other. A non-coercive discourse ("herrschaftsfreier Diskurs") according to Wolfgang Habermas (elaborated in "Theorie des kommunikativen Handelns" 1981) has as its object a decision through the persuasive force of the best argument. It requires equal partners in a communication, an equal opportunity to be heard and a symmetrical situation, all of which is given when different Boards, which are not in a hierarchy amongst each other and are equally competent to interpret the EPC, decide on the same question of law and are forced to come up with better arguments when contradicting each other. Ideally, a sequence of such decisions can then lead to a common understanding as to the best argument and the best answer to a given legal problem. A Board may therefore refrain from making a referral in the belief that its own decision, as part of a non-coercive discourse, will lead to a commonly accepted answer to a certain legal problem. Particularly in cases where a problem has only recently been identified, a non-coercive discourse may be helpful in arriving at a commonly accepted answer or in providing an argumentative basis for a future referral.