T 0196/22 - Goldschmidt and Habermas

Key points

• "The question is then whether the Board should give a party time to formulate questions for a potential referral in regard of points that have already been discussed and decided. The Board takes the view that it should not, for the following reason: 
• Oral proceedings, and court proceedings, for that matter, are not a domination-free discourse in the sense of Habermas where issues are discussed in whatever order until a solution agreeable to everyone has been reached. Rather, proceedings are meant to put the deciding body, in this case the Board, in a position to decide about the issues in dispute. In order to do so, procedure is structured by different stages, and once a certain stage has been concluded, a party may no longer be able or allowed to undertake certain procedural acts: Once the time limit for filing an appeal has passed, an appeal can no longer be filed; once a party has presented its complete case with the grounds of appeal or the reply thereto, any amendments may, but do not have to be allowed, Art. 13(1) Rules of Procedure of the Boards of Appeal. This is good law and has a recognised doctrinal basis in academic writings, e.g. James Goldschmidt, Der Prozeß als Rechtslage, Berlin 1925.
• I don't know the book, but it is described as "a classic monograph on German procedural law".  See also T 0360/13.
• I'm not up to speed with Habermas and would appreciate suggestions from readers for a good explanation of "a domination-free discourse in the sense of Habermas".
• The legal member in T0360/13 and in the present case is Mr. Heath. 
• Where in oral proceedings an issue has been discussed, the Board closes the debate on this issue, deliberates thereupon and announces its conclusions. The Board may of course reopen the discussion on this issue. During the oral hearing on this case, the issue of synergy was addressed. While the Board was under the impression that a discussion on synergy was all the respondent had to say on inventive step, it transpired that the respondent had been under the impression that they should address issues other than synergy at a later stage. Due to this misunderstanding, the Board then reopened the discussion on inventive step which was then continued to hear the respondent's further submissions. Reopening the discussion was thus a necessity for guaranteeing the respondent's right to be heard. A Board can also reopen the discussion of its own motion if during its deliberation further issues of relevance come to light. However, the Board is unlikely to reopen the discussion once the parties have been properly heard and the Board feels in a position to form an opinion. It may do so, but it does not have to.  
• In the case at issue, the respondent's request for time in order to formulate questions to the Enlarged Board could have had no other purpose but to reopen a debate that already been concluded. Its only aim could have been for the Board to review its conclusions of its own motion, or to request guidance from the Enlarged Board and review its conclusions in light of such guidance. As the Board had already reached its conclusions, a reopening of the discussion was at the discretion of the Board, and the Board decided that no such reopening was opportune or necessary."
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• The application was filed as a PCT application in 2007. EP Entry in 2009, examination started in 2015 (!) Grant in 2019. 

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/t220196eu1

5. Request to file a request for referral to the enlarged Board of appeal, Article 112(a)

5.1 Together with the filing of Auxiliary Request 16, the respondent requested to be given time to formulate two questions that should be referred to the Enlarged Board of Appeal, the first question relating the the interpretation of synergy and the second to the standard for not admitting Auxiliary Requests 11a, 12, 12a or 14a into the proceedings. While the respondent acknowledged that the discussion on these points had been closed and the Board had announced its conclusions in regard of synergy and taken the decision not to admit the above auxiliary requests into the proceedings, they argued that the necessity of a referral lay in the Board's conclusions, which of course could only be known once the Board had reached them.

5.2 During the discussions on the above two points, the respondent neither explicitly requested a referral, nor argued that these issues were of fundamental importance or that the Board when coming to a certain conclusion would deviate from previous case law. The only argument in regard of the latter was the representative's remark that the position the Board appeared to take on synergy was nothing he had experienced in his 25 years of practice before the Boards of Appeal. However, the Board is not privy to a representative's experience and therefore cannot draw the conclusion that this amounts to a request for referral because of a perceived conflict with existing case law. A request for referral, be it directly or indirectly, or an argument in regard of fundamental importance or previous inconsistent case law, was thus not made when the relevant points were open for discussion. In fact, the representative cited not even one single decision. And since the Board's communication expressing its provisional opinion had mentioned both the question of synergy and of problems with late-filed requests, the representative was not confronted with new issues that may have taken him by surprise.

5.3 The question is then whether the Board should give a party time to formulate questions for a potential referral in regard of points that have already been discussed and decided. The Board takes the view that it should not, for the following reason:

Oral proceedings, and court proceedings, for that matter, are not a domination-free discourse in the sense of Habermas where issues are discussed in whatever order until a solution agreeable to everyone has been reached. Rather, proceedings are meant to put the deciding body, in this case the Board, in a position to decide about the issues in dispute. In order to do so, procedure is structured by different stages, and once a certain stage has been concluded, a party may no longer be able or allowed to undertake certain procedural acts: Once the time limit for filing an appeal has passed, an appeal can no longer be filed; once a party has presented its complete case with the grounds of appeal or the reply thereto, any amendments may, but do not have to be allowed, Art. 13(1) Rules of Procedure of the Boards of Appeal. This is good law and has a recognised doctrinal basis in academic writings, e.g. James Goldschmidt, Der Prozeß als Rechtslage, Berlin 1925.

Where in oral proceedings an issue has been discussed, the Board closes the debate on this issue, deliberates thereupon and announces its conclusions. The Board may of course reopen the discussion on this issue. During the oral hearing on this case, the issue of synergy was addressed. While the Board was under the impression that a discussion on synergy was all the respondent had to say on inventive step, it transpired that the respondent had been under the impression that they should address issues other than synergy at a later stage. Due to this misunderstanding, the Board then reopened the discussion on inventive step which was then continued to hear the respondent's further submissions. Reopening the discussion was thus a necessity for guaranteeing the respondent's right to be heard. A Board can also reopen the discussion of its own motion if during its deliberation further issues of relevance come to light. However, the Board is unlikely to reopen the discussion once the parties have been properly heard and the Board feels in a position to form an opinion. It may do so, but it does not have to.

In the case at issue, the respondent's request for time in order to formulate questions to the Enlarged Board could have had no other purpose but to reopen a debate that already been concluded. Its only aim could have been for the Board to review its conclusions of its own motion, or to request guidance from the Enlarged Board and review its conclusions in light of such guidance. As the Board had already reached its conclusions, a reopening of the discussion was at the discretion of the Board, and the Board decided that no such reopening was opportune or necessary.

5.4 The respondent argued that the point they wanted to make with the referral had only become pertinent once the Board had reached its conclusions.

For one, it is inherent in judicial decisions that their result only becomes known after the court has reached its decision. Reopening the discussion on any issue relevant to the decision is then subject to the procedural avenues that are available. In regard of a decision rendered by the Boards of Appeal, the only judicial remedy is a petition for review, as was pointed out to the respondent during the oral proceedings. After all, there is no mechanism equivalent to Art. 109 EPC that would allow the party to an adverse decision to request an interlocutory review and have the Board review its own decision.

5.5 In addition, if the respondent was correct in its argumentation, parties to an oral hearing would be entitled to request a referral to the Enlarged Board every time the Board reached an adverse conclusion, thereby forcing the Board to reopen the discussion on subject matter that by way of the Board's conclusions has become "water under the bridge". Should a party to proceedings before the Boards of Appeal be convinced that certain questions merit the attention of the Enlarged Board, this argument should be made before or during the discussion on this question, but certainly not afterwards. A party may very well indicate during the discussion that "should the Board intend to decide the question in this way, the following question should be referred to the Enlarged Board of Appeal", or "should the Board not be minded to admit the Auxiliary Requests into the proceedings, it would deviate from established case law and the matter should be referred to the Enlarged Board of Appeal". However, submitting such requests raised only after the debate on the issue has been closed would, if allowed, make oral proceedings a merry-go-round, which, in the Board's view, they should not be.

5.6 The Board for these reasons was within its discretion in refusing to give a party time to formulate questions to the Enlarged Board whose only purpose it could have been to reopen a debate that had already been closed, and based on which the Board had reached its conclusions.

6. As the patent according to auxiliary request 6 (as maintained) fails to meet the requirements of the EPC, and no other request has been admitted, the appealed decision must be set aside and the patent revoked pursuant to Article 101(3)(b) EPC.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.