R 0010/24 - Review of decision to hold inadmissible

Key points

• The EBA took some time to draft its decision (7 months), but the result does not disappoint.
• The petitioner complains of the TBA's decision to hold a submission inadmissible.
• The EBA, in the translated headnote: "Because of the severity of the interference caused by the non-admission of amended submissions under the provisions of the RPBA, i.e. Articles 12 and 13 thereof, the interpretation and application of those provisions, which qualify the right to be heard, are subject to substantive review and not merely to review for arbitrariness. In this respect, the right to be heard is infringed, for example, also where such provisions are applied in a manifestly incorrect manner. "
• On the admissibility:  "According to the petitioner, an objection concerning the first ground for review — procedural defects under ... Article 113(1) EPC... — could not have been raised during the oral proceedings before the Board of Appeal, since, following the rejection of the auxiliary request, the Board had been bound by that decision. In this respect, the petitioner relies on R 10/08 and R 3/10."
• "It was undisputed that a formal decision had been announced on the main request, which had prevented the Technical Board of Appeal from reopening the debate on that request when [if?] the objection [under Rule 106] was raised ( "als der Einwand erhoben worden sei")."
• According to the minutes, no objection under Rule 106 was raised. 
• "In R 3/10, at point 1.4.1, it was held as follows: since a Board of Appeal is bound by a substantive “decision” once it has been issued and can no longer rectify it subsequently, and since the purpose of the obligation to raise an objection under Rule 106 EPC is to give the Boards of Appeal the opportunity to remedy the defect before a decision is issued, an objection under the first alternative of Rule 106 EPC can no longer be validly raised after the decision has been issued (R 10/08 of 13 March 2009, point 3).
• "To the extent that the petitioner relies on decision R 3/10 as establishing an exception to the obligation to raise an objection under Rule 106 EPC, the EBA is inclined, in relation to the present case, not to dismiss the petition for review as manifestly inadmissible solely on account of the failure to raise such an objection." 
• The EBA appears to see a difference with point I.2.2 of  R 5/19.
• The EBA examines the case file in some detail and concludes that the opponent had raised the relevant objection in the appeal. Moreover, the objection was included in the OD's decision. Hence, the proprietor should have filed the responsive auxiliary request before the Board gave their preliminary opinion. 

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EPO R 10/24

R 0006/24 - (I) When to object under Rule 106

Key points

• The EBA holds that a petitioner was not required to raise an objection under Rule 106 with respect to certain grounds for the petition. This is, of course, highly interesting, even more so because the petitioner's complaint is not about surprise reasoning in the Board's decision, but on the Board's (alleged) failure to address certain arguments of the petitioner (opponent). 
• The EBA, in translation: " the petitioner [opponent] raises a total of seven essentially independent objections alleging a violation of her right to be heard, which are summarized under the following three "aspects": (1) The Chamber did not properly consider several arguments put forward by the applicant concerning the interpretation and disclosure of [certain claim features].  (2) The Board also failed to address certain arguments  [of the petitioner/ opponent] ..."
• The EBA finds the first two aspects admissible even without a corresponding Rule 106 EPC objection.
• "a [Rule 106 objection ]was not already prompted by the communication to the Board of Appeal pursuant to Article 15(1) RPBA".
• "a distinction must be made between procedural acts of the Board that are still pending and those that are demonstrably completed, such as a procedural measure or an admission decision that has a direct (procedurally relevant) legal consequence. An objection under Rule 106 EPC during the ongoing proceedings can only be expected for the latter."
• The EBA here seems to depart from R 17/23 (blog post).
• " The petitioner is correct in asserting that Article 113(1) EPC, and consequently also Article 112(2)(c) EPC, refers to the final decision on the merits by the body competent to decide the case, and not to its preliminary opinions. The petitioner is also correct in asserting that it is unreasonable to expect a party to raise a formal objection during the proceedings with regard to every single statement made by the Board, in the expectation that this objection will be reflected unchanged in the decision and perhaps serve as grounds for a petition for review. Such a practice unduly delays the proceedings, since the Board must not only take note of an objection under Rule 106 EPC, but also address and decide upon it [CLBA V.B.3.7.2.5] ... Therefore, the grounds for the application relating to the first two aspects are admissible with regard to Rule 106 EPC."
• Regarding 'decide upon it':  this follows from Rule 106: "only admissible where an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the Board of Appeal, except ..." (see also R 6/22: the party raising the objection must also check if the Board explicitly dismisses it and if not, raise the objection more clearly). 
• The EBA does not explicitly apply these general statements to the facts of the case. This makes the decision difficult to understand. The TBA had, in the preliminary opinion, referred to Art. 13(2) RPBA in connection with any submissions the opponent wished to file afterwards. The opponent indeed filed a letter after the preliminary opinion. I understand that the arguments presented in that letter were (allegedly) not dealt with in the preliminary opinion. It may be inferred that since there was no decision to hold the letter inadmissible under Art. 13(2) RPBA, the opponent could assume that the TBA would consider the arguments in that letter on their merits in the written decision. 
• The EBA holds that Rule 106 objections are only required for procedural measures or admissibility decisions that have a direct (procedurally relevant) legal consequence (and not for any statements in the preliminary opinion).
• It remains to be seen how a TBA deals with a valid Rule 106 objection after the procedural decision has been announced during oral proceedings. May the TBA reverse the procedural decision?

 EPO 

The link to the decision is provided after the jump.

T 1899/23 - When the Board ceases to exist

Key points

• "On 1 September 2025, a new business distribution scheme (BDS) was adopted, according to which the IPC class of the patent underlying the decision under appeal (C11D) was to be allocated to Board 3.3.02 as of 1 December 2025 and the allocation of the technical and legal members of Board 3.3.06 terminated after 30 November 2025. "
• "On 4 November 2025, the case was transferred to Board 3.3.02 with effect from 1 December 2025 and the parties were informed accordingly. The composition of the Board in the present case remained unchanged." However, the three members of the Panel were not assigned to Board 3.3.02, but to different Boards.
• "In a submission dated 13 January 2026, the appellant raised an objection under Rule 106 EPC and requested "to cancel the oral proceedings and to hold oral proceedings with the Board 3.3.02 in a composition of the Board 3.3.02 in a composition meeting the requirements of the business distribution scheme dated September 1, 2025". It argued that the composition of the panel with members of previous Board 3.3.06 contravened the BDS of 1 September 2025 [27 June 2025] as none of the members belonged to Board 3.3.02, i.e. the Board the case was allocated to with effect from 1 December 2025. "
• "the appellant's final request ... implies that the panel would have to determine that members of Board 3.3.02 would have to continue the assessment of this case. The panel has no competence to decide accordingly (see Article 1(3) RPBA and Article 3, 4 BDS). [...] since the Chairman of Board 3.3.02 also did not meet the appellant's request to change the composition of the panel in this case but rather confirmed that its composition remained unchanged, there is no basis for continuing the case with members of Board 3.3.02 and its Chair or Vice Chair." (referring to G 1/21).
• " with respect to the objection under Rule 106 EPC, the Board considers, in any event, that the composition of the panel for this case was in accordance with the applicable provisions of the relevant business distribution schemes for the Technical Boards of Appeal."
• "The defects set out in Article 112a(2)(a),(b) and (d) EPC at least do not encompass a violation of the right to have the case decided by the lawfully designated judges in accordance with the business distribution scheme". However, a violation of the right to be heard is not excluded.
• " for the purposes of the present case, there is no need to decide whether a fundamental defect in the composition of the responsible panel could indeed be regarded as a violation of the right to be heard under particular circumstances (e.g. if the defect were so severe that the composition was entirely arbitrary) and what consequences this might have for the continuation of the proceedings. This is because the parties' interest to be heard by the lawfully designated judges (and, accordingly, the right to have fair proceedings) is not affected in the present case. Under these circumstances, the Board finds it appropriate to comment on the composition of the panel in this particular case."
• "The wording of Article 8 BDS of 27 June 2025 is as follows: "Cases in which before 1 January 2025 [sic] a communication has been sent or oral proceedings have been appointed shall not be affected by this business distribution scheme, nor shall those cases individually allocated in transitional provisions of previous business distribution schemes. This provision applies mutatis mutandis if the business distribution scheme is amended during the working year." (link)
• "Since both the Board's communication under Rule 15(1) RPBA and the summons to oral proceedings had already been issued before the new business distribution scheme of the Technical Boards of Appeal of 27 June 2025 entered into force, the composition of the panel as set out in the communication of 21 May 2025 had to be maintained pursuant to Article 8 BDS."
• How the Board goes from 1 January 2025 to 27 June 2025 as the relevant date, is not explained, though most likely the cut-off date was simply not updated in the June 2025 version of the BDS. 
• "The BDS does not define the measures to be taken if a Board loses its Chair and all its members and, for practical purposes, ceases to exist."
• "The Board considers that Article 8 BDS is to be applied analogously if the case is transferred to another Board because the previous Board effectively ceases to exist."
• "Hence, although the case was transferred to Board 3.3.02, the present panel, consisting of members not allocated to this Board, did not have to be replaced in the given constellation. Rather, the composition of the panel as set out previously could remain unchanged pursuant to an analogous application of Article 8 BDS, which was also confirmed by the Chair of Board 3.3.02 with communication of 15 January 2026."
• The Board finds that claim 1 involves added subject-matter and dismisses the appeal. 

EPO 

The link to the decision is provided after the jump.

R 0013/25 - Decision TBA to hold AR inadmissible

Key points

• The EBA considers a petition for review inadmissible because no timely objection was raised under Rule 106 EPC.
• The EBA, in the German original:  "Gemäß dem Protokoll der mündlichen Verhandlung wurde die Entscheidung der Beschwerdekammer, die Hilfsanträge 9-11 nicht in das Verfahren zuzulassen, während der mündlichen Verhandlung verkündet, bevor die Ausführbarkeit der Erfindung gemäß Anspruch 1 des Hilfsantrags 5 diskutiert wurde (Seite 3 des Protokolls). Bereits zu diesem Zeitpunkt, spätestens aber vor Ende der mündlichen Verhandlung, hätte die Antragstellerin die angebliche Verletzung des rechtlichen Gehörs rügen müssen."
• As a comment, suppose the TBA announces a "decision" (as opposed to a conclusion) to hold a submission admissible in the course of oral proceedings. Can the TBA subsequently change its decision if a party thereafter -  but still during the oral proceedings -  raises an objection under Rule 106? 
• I admit that the text of Rule 106 does not clearly distinguish between these situations. It requires that "an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the Board of Appeal". That is, of course, still possible, even if the orally announced decision to hold the submission inadmissible is already res judicata.
• Of course, a TBA may also announce a "conclusion" that a submission is not admitted during oral proceedings (the difference being that after a conclusion, the debate may still be reopened in certain circumstances).

EPO 

The link to the decision is provided after the jump.

R 0017/23 - Parties must pre-emptively raise "questions" under Rule 106 (?)

Key points

• Decision dated 24.02.2025. Written decision issued on 17.10.2025, about nine months later. However, there is no time limit for the EBA, Art. 15(9) RPBA does not apply to petition for reviews.
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• From the minutes of the oral proceedings before the TBA, one of the points discussed was the "necessity of a referral of two questions to the Enlarged Board of Appeal (EBA) for ensuring uniform application of the law, in particular in view of the allegedly diverging decisions T 2273/10 and T 1621/16; relevance of the proposed questions."
• Still from the minutes of the oral proceedings before the TBA: "The parties repeated their initial requests. The Chairman asked the parties if they had any further comments or requests. There were none. The Chairman then declared the debate closed. After deliberation the chairman declared that the appeal was to be dismissed. The appellant raised an objection under Rule 106 EPC. The appellant confirmed that they were able to present their case on the question whether the proposed questions should be referred to the EBA. However, due to the decision not to refer those questions to the EBA, the appellant is deprived of the possibility to present their case there. Thus, their right to be heard (by the EBA) is allegedly violated. The appellant referred to R 8/11, R 7/13, R 17/14. The text of the objection was read out to the parties and agreed by the appellant. The objection was then discussed with the parties. The Board interrupted the proceedings for deliberation on the objection under Rule 106 EPC. After deliberation by the Board, the following decision was given: The appeal is dismissed. The Chairman then closed the oral proceedings."
• The EBoA: "The objection under Rule 106 EPC was thus (*) not raised in a timely manner by the petitioner, as noted in the decision, under Reasons 4.2 (p. 21), even though the objection was discussed with the parties before the decision to dismiss the appeal was announced. "
• The TBA, in their decision: "Regarding a merely formal issue, the appellant raised the objection after the end of the debate, i.e. once the substantive debate had already ended and when the board had announced the conclusion of its (final) deliberation (see the minutes, page 2, penultimate paragraph). Before the end of the debate, each party was explicitly asked about their requests and whether they had any further comments. Requests cannot be deemed filed in a timely manner if a party waits for the board to announce its opinion and then complains if its requests have not been granted."
• * - As a comment, regarding the 'thus': the preceding paragraphs consist of a purely factual overview of the events during the oral proceedings before the TBA, without any analysis or reasoning of the EBoA.
• "in the view of the Enlarged Board, when the parties were asked if they had further comments or remarks before the closure of the debate, the petitioner could then have raised, at least provisionally, a question under Rule 106 EPC, in case the Board dismissed its request for referral of questions to the Enlarged Board. However, according to the minutes, it did not."
• "question under Rule 106 EPC" is the term used by the EBA.
• The EBA here instructs is to precautionarily submit  "question(s) under Rule 106 EPC" if there is any risk that the TBA will announce an adverse conclusion (or decision) when the parties are asked for their final requests.
• The EBA uses 'could'. However, the EBA sanctions the petitioner for failing to make use of that opportunity (partial inadmissibility of the petition for review), so the term means 'should'.
• The EBA does not explain how such a "question" should be worded by the parties, but the instruction to representatives is clear.
• The EBA: "in the view of the Enlarged Board, the fact that the chair announced, after this closure, that the appeal was dismissed, without reference to a possible referral, clearly shows that such a referral was not allowed. In addition, the decision under review (Reasons, 4.2 last paragraph, p. 21) states that "Even if the arguments had been put forward in time, they would not have been successful", which shows that the Board nevertheless regarded the Rule 106 EPC objection as late."
• It is not entirely clear to me to which moment the EBA refers with the phrase "the fact that the chair announced, after this closure, that the appeal was dismissed" given that the oral proceedings before the TBA wer closed twice (from the minutes: "The Chairman then declared the debate closed. After deliberation ...  [Rule 106 objection raised and discussed] After deliberation by the Board, the following decision was given: The appeal is dismissed. The Chairman then closed the oral proceedings".
• The above points are not obiter in the decision of the EBA: "Therefore, the petition is clearly inadmissible, insofar as it is based on sections II.1 to II.6 of the petition, concerning the argument that refusal to refer questions to the Enlarged Board of Appeal infringed the petitioner's right to be heard."
• Compare: R 11/21: an objection [under Rule 106 EPC] cannot be raised before its cause has actually come into existence".

EPO 

The link to the decision can be found after the jump.

R 0006/22 - How to object under Rule 106

Key points

• "The reasoned petition was filed on 18 February 2022" 
• The written decision was issued on 28 February 2024, i.e. after more than two years, by a panel of the Enlarged Board consisting of three members. I will leave the issue of the length of the procedure aside for now, but not because it is an unimportant issue.
•  Rule 106 provides that a petition for review "is only admissible where an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the Board of Appeal, except where such objection could not be raised during the appeal proceedings"
• "Oral proceedings before the Board were held on 15 November 2021. The Board's contested decision was announced at the end. The minutes were posted on 19 November 2021 and do not contain any detail of the arguments relied on for the various discussed issues. For the purposes of the petition, the discussion of the main request and auxiliary request is relevant."
• Note, the parties are effectively prevented from keeping a proper record of the oral proceedings by the prohibition of sound recording. 
• "From the minutes it transpires that the issues of added subject-matter, novelty and inventive step for the main request and of the admittance of the auxiliary request were discussed without interruption. After the Board's deliberation on these issues, the Chair announced that the main request was novel but did not involve an inventive step, and that the Board did not admit the auxiliary request into the proceedings. This was followed by a discussion on apportionment of costs. "
• "The petition is essentially based on the two grounds that (1) the non-admittance of the auxiliary request constituted a violation of the right to be heard since the auxiliary request had been submitted in response to a new argument raised by the Board"
• The EBA: 'From the file it appeared that an objection under Rule 106 EPC had not been made when the Board announced that it would not be admitting the auxiliary request into the proceedings. Mere observations on the right to be heard did not qualify as an objection under Rule 106 EPC unless they were immediately and doubtlessly recognisable as such. "
• "An objection under Rule 106 EPC must be expressed by a party in such a form that a board is able to recognise immediately and without doubt that an objection under Rule 106 EPC is intended. An objection under Rule 106 EPC is in addition to and distinct from other statements, such as arguing or even protesting against the conduct of the proceedings or against an individual procedural finding."
• " It is undisputed that the non-admittance as such was already known to the petitioner during the oral proceedings. It is also apparent from the minutes that the petitioner already had multiple opportunities to formulate a proper objection under Rule 106 EPC during the oral proceedings. Following the decision on the admittance, other issues were still under discussion. The parties were also invited to comment before the Board announced its final decision, before the closure of the oral proceedings."
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• "[T]he [Enlarged] Board had no reason to assume that the petitioner's argument on the right to be heard was already a formal objection pursuant to Rule 106 EPC. A mere reference to the right to be heard does not immediately become an objection under Rule 106 EPC. It normally needs to be formulated after the alleged procedural irregularity and cannot be formulated prematurely; see R 14/11, Reasons 2.7 [] . For this reason alone, the Board did not have to assume in the course of the oral proceedings that the proprietor intended to make an objection under Rule 106 EPC, even if it did take note of the remark on the right to be heard during the discussion on the admittance."
• "It is undisputed that the non-admittance as such was already known to the petitioner during the oral proceedings. It is also apparent from the minutes that the petitioner already had multiple opportunities to formulate a proper objection under Rule 106 EPC during the oral proceedings. Following the decision on the admittance, other issues were still under discussion. The parties were also invited to comment before the Board announced its final decision, before the closure of the oral proceedings."
• Note, G 12/91 held that: "Where oral proceedings are held, the decision may be given orally. The decision becomes effective by virtue of its being pronounced. ... Once it has been pronounced ... the decision enters into force and cannot be amended, even by the department that issued it. " This holding should probably be understood in a nuanced sense for decisions on the admissibility of submissions announced in the course of the oral proceedings: they can be set aside by the Board in case of a persuasive objection under Rule 106 EPC

EPO 

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

R 0011/21 - When to object under Rule 106?

Key points

• In my post about T1891/20, I raised the question whether "it make sense to raise an objection under Rule 106 after the Board orally announces "its decision not to admit the auxiliary request into the proceedings"? Can a Rule 106 objection be raised pre-emptively before the Board commits the (perceived) procedural defect?"
• The Enlarged Board in this decision gives a partial answer, by finding that "an objection [under Rule 106 EPC] cannot be raised before its cause has actually come into existence".
• "The petitioner [patentee] submitted that the non-admittance of the auxiliary requests [filed with letter] of 13 January 2021 into the proceedings constituted a first fundamental procedural defect."
• "Regarding compliance with Rule 106 EPC, the petitioner referred to page 15, paragraphs 3 to 5, of the letter dated 13 January 2021 [where] the [patentee] announced, "for merely precautionary reason", that it would challenge "any contrary decision [i.e. to hold the auxiliary request inadmissible]" by filing a petition for review according to Article 112a EPC."
• The Enlarged Board: "Under Rule 106 EPC, the objection has to be raised in respect of "the procedural defect" and dismissed by the Board. This implies that an objection cannot be raised before its cause has actually come into existence. The purpose of Rule 106 EPC is to give the Board a chance to react immediately and appropriately by either removing the cause of the objection or by dismissing it (see also Case Law of the Boards of Appeal, 10th edition 2022, "CLBA", V.B.3.6.1 and R 3/20, point 2.2.1 of the reasons). In other words, an objection cannot be formulated prematurely (see R 8/08, point 1.2.2 of the reasons; R 17/10, point 2.3 of the reasons; R 21/11, point 10 of the reasons)."
• "The statements on which the petitioner is relying were contained in the letter dated 13 January 2021, with which the new claim requests were filed and, hence, at a point in time at which the Board had not yet taken any steps concerning these claim requests."
• Note, this leaves open that it is sufficient to object if a Board had taken some step concerning the admissibility of the claim requests.
• "As far as the appeal procedure subsequent to the filing of the letter dated 13 January 2021 is concerned, there is nothing on file - neither in the petitioner's submissions before the Enlarged Board nor in the minutes of the oral proceedings before the Board - which would suggest that the petitioner made submissions which could qualify as an objection under Rule 106 EPC."
• "the petitioner has not submitted - nor was it apparent to the Enlarged Board - that an objection could not have been raised during the appeal proceedings, for instance at the oral proceedings before the Board."
• " it must be concluded that the requirements under Rule 106 EPC have not been met in relation to the asserted procedural defect concerning the non-admittance of the auxiliary requests of 13 January 2021. As regards this complaint, the petition is therefore clearly inadmissible."
•  Take away message: object, object, object; and repeat the objection all the time (until case law clarifies the right time to object).
  
  
• The petitioner also challenged the decision to hold the claim request inadmissible by arguing that the decision on that point was insufficiently reasoned, which in turn can qualify as a violation of the right to be heard. This 

EPO 

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

T 1891/20 (II) - Request for correction of the minutes

Key points

• The patentee requests a correction of the minutes of the oral proceedings before the Board. The patent was revoked.
• The Board's written decision was issued on 9 December 2021, the minutes were issued on 19 November 2021. The request for correction was filed 3 February 2022. 
• A petition for review is pending.
• The Board "[because] the request for correction of the minutes was only made afterwards, the board considers it appropriate to deal with the request for correction in a decision ancillary to the board's written decision of 15 November 2021".
• "The board considers the present decision to be ancillary in that it cannot be challenged under Article 112a(1) EPC separately from the board's written decision of 15 November 2021 "
• "Parties are obliged to submit a request for correction of the minutes of oral proceedings promptly after receipt of the minutes (R 6/14, Reasons 7; see also point 2.4 above). The board understands this to require an immediate action from a party, i.e. to submit a request for correction of the minutes in the shortest time possible after their receipt."
• "Hence, if a party considers that the "essentials of the oral proceedings" or "relevant statements" within the meaning of Rule 124(1) EPC are incorrect or missing in the minutes of oral proceedings, they must file a request for correction of the minutes in the shortest time possible after their receipt. This ensures that the relevant facts and submissions are still fresh in the minds of the members of the deciding body and, if applicable, the other party or parties."
• "The contents of the written decision following oral proceedings do not have any bearing on whether the minutes of oral proceedings are incorrect or incomplete. The respondent therefore errs when stating in its submission dated 10 May 2022 that it is "compulsory" to wait for the written decision before submitting a request for correction of the minutes. Rather, such conduct suggests that a request for correction of the minutes may be embedded in litigation tactics, the purpose of which may not be limited to ensuring that the minutes are indeed correct and complete."
• "For the sake of completeness, the board points out that minutes may also be corrected ex officio (cf. T 231/99). Hence, while a party's request for correction of the minutes may be refused due to its late filing, a late-filed request for correction does as such not prohibit the competent body from correcting the minutes following that request."
• On the merits: "The respondent [patentee] alleged to have stated during the oral proceedings that "the right to be heard has not been respected by the Board by the non-admittance of the new auxiliary request"."
• "This is in contradiction to the unanimous recollection of the members of the board. The respondent did not at any time raise any objection related to any alleged procedural defect."
• " Rather, the respondent had argued during the discussion before the deliberation by the board that it followed, in its view, from the right to be heard that the auxiliary request should be admitted into the proceedings, because of the allegedly "new" objection as to added subject-matter raised by the board in its preliminary opinion under Article 15(1) RPBA 2020, to which they had reacted by filing the auxiliary request."
• "Presenting such an argument in favour of the admittance of a claim request does, however, not qualify as an objection under Rule 106 EPC and is, in fact, not recognisable as any kind of objection. Moreover, after the board had deliberated and had announced its conclusion not to allow the main request and its decision not to admit the auxiliary request into the proceedings under Article 13(2) RPBA 2020, the respondent did not make any reference whatsoever to the "right to be heard" or any other procedural issue."
• As a question, does it make sense to raise an objection under Rule 106 after the Board orally announces "its decision not to admit the auxiliary request into the proceedings"? Can a Rule 106 objection be raised pre-emptively before the Board commits the (perceived) procedural defect?

EPO - T 1891/20 (II) 

The link to the decision is provided after the jump.

T 0448/16 - Board must remain neutral

Key points 

• This decision in an opposition appeal was given publication code [C] by the Board, so I discuss it here.
• The Board considers the claims of the Main Request to involve an unallowable intermediate generalization.
• " Lifting feature f out of this context (of paragraph [0063] and figure 2B) and adding it in isolation to claim 1 therefore represents a generalisation of the specific structural and functional context in which the feature might be said to originally appear. At the same time it raises it to prominence, giving it a significance over other features that it does not have in the original parent disclosure." 
• The patentee raised an objection under Rule 106 EPC. " The core of the objection as the Board understands it is that it should have indicated to the appellant-proprietor what features were missing in the various versions of the auxiliary requests " (to address the issue of intermediate generalization due to the isolated extraction of feature F out of the description).
• The Board in reply recalls that " a board must remain neutral in inter partes proceedings, both in its communications to the parties and in oral proceedings." (R9/09). 
• The Board dismisses the Rule 106 objection on the ground that "Had the Board, after having discussed the issue exhaustively with the parties, then indicated to the appellant-proprietor, precisely which specific features were missing from claim 1 in any of its versions so that the appellant-proprietor could compose suitable counter-arguments or file a suitably adapted further request, this would have favoured the appellant-proprietor's case over that of the respondent-opponents. Such a course of action would have compromised the Board's duty to remain neutral, and thus the Board saw itself as prohibited from so doing." 

EPO T 0448/16 -  link

9. During the oral proceedings before the Board after non-admission of Auxiliary Request ID, the appellant-proprietor raised, in writing, the following objection under Rule 106 EPC:

"We herewith raise an objection under Rule 106 EPC.
In the first part of the oral proceedings, the Chairman asked the parties to present their cases on the question of added matter over the parent application. After a break for deliberation, the Board indicated that the claims of the main request and all auxiliary requests on file contain added subject-matter, in violation of Art. 76 EPC. The Chairman indicated that the claims of all requests on file, including all auxiliary requests in versions A, B and C are inadmissibly generalized. Proprietor's representatives asked if the Board's opinion had changed over the written preliminary opinion, and for an indication as to the feature/features which caused the violation found. At a later stage in the oral proceedings, the Chairman stated that the generalization relates to feature f). Thereafter, the Proprietor's representatives asked for indication as to why this feature f) was found to be inadmissibly generalized, i.e., which missing aspects of the original disclosure of the parent application caused the objection.
However, the Board was not willing to provide such indication.
Therefore, Proprietor was not in a position to properly react, provide arguments, or remedy possible deficiencies in any of the claim sets on file. In the Proprietor's view, this constitutes a fundamental violation of the right to be heard according to Article 113 EPC".

T 1934b/14 - Ancillary Decision about minutes

Key points

• This is an "Ancillary decision"  in case T1934/14 issued 08.10.2018 after the decision of 15.03.2018 wherein the patent was revoked.
• The patent proprietor had requested that the minutes of the oral proceedings before the  Board were supplemented.
• In particular, the Patentee submits that during the oral proceedings, he had requested interruption of the oral proceedings, that the Board had rejected this request at once, that the Patentee had brought forward an objection against the ruling, and that the Board dismissed the objection immediately.
• The Board states that such a request is not in the written notes of the Board and also not the recollection of the Board. The counterparty (opponent) also cannot remember such request, according to the Board. 
• The Board notes that the Patentee "admits that it had not requested to take a request for interruption of the oral proceedings into the minutes".
• The Board notes that according to R2/12, "it is the duty of a party to check whether its objection to a fundamental procedure defect... has been recognized by the Board and will be dealt with". However, the Board finds this rule not decisive, because "according to the Board's knowledge and conviction such a request for interruption ... has .. not explicitly been brought forward".
•  The Board obiter dictum notes that " one might argue whether the filing of the request for correction of the minutes nearly 3 months after notification of the minutes fulfils that requirement' (of requesting correction early).
• In this case, a petition for review R 8/18 is pending wherein the Patentee submits that the refusal of the request for interruption is a fundamental violation of the right to be heard.
•  Rule 106 EPC puts the burden of proof on the petitioner, but with sound recording being forbidden by the Boards- (which seems a rather outdated policy decision to me personally, it is not that privacy of the parties needs to be protected ) -  his evidence position can be very difficult. Theoretically, a party can hire a court reporter or stenographer, but that is extremely expensive. Before the petition for review procedure was introduced with EPC 2000, parties had not a clear legitimate need for sound recording of oral proceedings, but this case clearly shows that it is different under EPC 2000, in my view. 

T 1934/14  of 8.10.2018  - link  ECLI:EP:BA:2018:T193414.20181008

Reasons for the Decision

"Request to file a further request::

1. With regard to this request the Board notes that the respondent in its reply of 7 September 2018 did not comment or object to the Board's opinion in the communication of 3 July 2018 (see "ad I.1." as reported in point II, above). In their declarations annexed to the respondent's reply Mr. Frischknecht Heller and Ms. Höfer only confirmed that such a request (see above I.1.) had been brought forward by the respondent at the beginning of the oral proceedings, what has not been denied by the Board.

2. Therefore, the Board has no reason to depart from its opinion as provided in its communication of 3 July 2018. Consequently, this request for supplementation of the minutes has to be rejected for the reasons referred to above (see II.).

T 0928/12 - Objection Rule 106

Key points

• If a request is not admitted on procedural grounds, there is no need to give the patent proprietor an opportunity to presents arguments for novelty and inventive step.

EPO T 0928/12 -  link

5. Rüge unter Regel 106 EPÜ

5.1 Mit ihrer Rüge hat die Beschwerdeführerin beanstandet, dass keine Möglichkeit gegeben war, "die Neuheit und erfinderische Tätigkeit des mit dem Hilfsantrag 2 neu eingereichten Anspruchssatzes vorzubringen". Die Fragen der Neuheit und erfinderische Tätigkeit dieses Antrags sind jedoch gerade deshalb nicht zur Diskussion gekommen, weil der Antrag aus verfahrensrechtlichen Gründen nicht ins Verfahren zugelassen wurde (s. Punkt 4.1 oben). Eine Diskussion der Neuheit und erfinderischen Tätigkeit kam daher aus diesen verfahrensrechtlichen Gründen nicht in Betracht. Hingegen wurde die Beschwerdeführerin selbstverständlich zur Frage der Zulassung dieses Antrags gehört. Das Unterbleiben der Diskussion über die Fragen der Neuheit und erfinderischen Tätigkeit ist daher auf die Nichtzulassung dieses Antrags zurückzuführen.

5.2 Bezüglich der Frage der Zulassung dieses Antrags wurde der Beschwerdeführerin jedoch ausreichend Gelegenheit eingeräumt, ihre Argumente zu diesem Thema vorzubringen. Eine Verletzung des rechtlichen Gehörs im Zusammenhang mit der Erörterung der Frage der Zulassung dieses Antrags kommt daher ebenfalls nicht in Betracht.

5.3 Die Kammer wies daher die Rüge zurück.

T 1693/10 - Switching sides

EPO T 1693/10 -  link - FR - [C]

Key points

• In this opposition case, a professional representative had changed firms, from the firm representing the patent proprietor to the firm working for the the opponent and was present during the oral proceedings at the side of the opponent. The patent proprietor was none too happy. However, the Board notes that the professional representative was present as accompanying person only and had not requested permission to speak (G 4/95). The EPC does not give the Board any power to forbid the presence of such permission. Moreover, any conflict of interest or violation of the Code of Conduct was only relevant for the relationship between the parties and possible disciplinary measures. 

Motifs de la décision

1. Le recours est recevable.

2. Objection selon la règle 106 CBE

2.1 Le représentant de l'intimée a contesté que la procédure orale puisse être poursuivie en présence de M. [C] aux côtés du mandataire de la requérante  [(opposante)]et il a soulevé une objection selon la règle 106 CBE.

Selon l'objection telle que formulée, il était avant tout demandé que le mandataire accompagnant ne participe pas à la procédure orale devant la chambre au motif qu'il était précédemment salarié du cabinet auquel appartenait le mandataire de l'intimée, au sein du département mécanique en charge de la présente affaire, de sorte qu'il se trouvait en situation de conflit d'intérêts. L'intimée a fait valoir que le mandataire accompagnant avait travaillé dans l'équipe du représentant de l'intimée jusqu'en 2014 et qu'il avait eu accès à tous les dossiers du cabinet. A son avis, la chambre devrait se prononcer sur la question de savoir si la présence du mandataire accompagnant était contraire au Code de conduite professionnelle. En plus, la présence du mandataire accompagnant constituerait une violation du droit à un procès équitable prévu à l'article 6 de la Convention européenne des droits de l'homme (CEDH). Elle a ainsi protesté contre la présence du mandataire accompagnant lors de l'audience, en particulier car le mandataire de la requérante n'avait informé au préalable ni la chambre ni l'intimée de la présence envisagée du mandataire accompagnant à la procédure orale. L'intimée a fait valoir que la seule présence du mandataire accompagnant aux côtés du mandataire de la requérante violait le droit à un procès équitable stipulé à l'article 6 CEDH ainsi que le droit d'être entendu prévu à l'article 113(1) CBE. Elle a ajouté qu'elle n'avait pas d'objection à la présence du mandataire accompagnant comme membre du public.