T 2652/22 and T 1787/16: Language of proceedings

Key points

• The application was filed in 2006. The patent was granted in 2013. The OD issued its first decision in 2016. The Board set it aside in 2021 in the first appeal. The OD issued its second decision in 2022. The second appeal decision was issued in 2025.
• Actually, the first appeal decision (T 1787/16) is more interesting. The first OD decision included citations of the opponent's submissions (in English), whereas the language of the proceedings was German. The Board found this to be a twofold substantial procedural violation. First, citations of the parties’ arguments cannot replace the reasoning of the OD under Rule 111(2) in the manner that occurred in the case at hand.
• Second, (and obiter, see point 12 of the reasons), the decision should have contained translations of the citations in the language of the procedure, i.e., German. In fact, the EPO may only use the language of the procedure in the written decision, with limited exceptions (e.g., for terms such as 'ex officio', and when citing evidence).
• T 1787/16, in translation: "Therefore, for proceedings under the EPC, too, applying Article 125 EPC and the overall analogy it prescribes, it can be deduced from the procedural principles of the Contracting States that there is only very limited scope for using a language other than the language of the proceedings in the decision, namely only to the extent that it is necessary to answer procedurally relevant questions of fact, evidence, and law. This includes the verbatim quoting of foreign-language documents (both technical and non-technical) and of written and oral statements by witnesses, experts, or parties in the context of the evaluation of evidence, or—generally speaking—in the context of assessing the probative value and content (interpretation) of documents."
• • My analysis is that the Board derived the main principle that a procedure has a single language of procedure, which must be used exclusively unless an exception applies. The liberal regime of  Rule 3(1) EPC ("In written proceedings before the European Patent Office, any party may use any official language of the European Patent Office") is, therefore, an exception and applies only to the parties, not to the EPO.  
• In the current second appeal decision, the Board also finds a procedural violation: the list of cited documents is not included in the decision. However, the Board does not remit the case and examines the patent on the merits.
• Interestingly, the first OD decision was to reject the opposition. In the second decision, the OD, with a different composition, had decided to revoke the patent. The proprietor's appeal is dismissed.

• 
  
• EPO 

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

Register now for the EPO course on the Taking of Evidence

• If you are a (qualified) European patent attorney regularly reading this blog, you are likely the primary target audience of the EPO course on evidence. The two online lectures (including a mock witness hearing) will take place on 23 and 30 September in the morning. 
• Registration is possible until Monday 15 September. Costs are EUR 320. Maximum of 35 participants.
• https://www.epo.org/en/learning/events/pw20-2025 
• 
  
• I participated in the course a couple of years ago and found it very useful and informative, well above the level of the EQE. Especially because Article 117 EPC is not usually discussed in great detail in EQE preparation courses. After following the course, you will be better prepared if and when an alleged public prior use shows up in one of your cases.
  
  
• Evidently, the course focuses on the practice before the OD (and the Guidelines). However, since T1138/20 (cited 57 times in the new edition of the Case Law book),  we know that, as a rule, you have to get your witness hearing right before the OD. 

T 0490/23 - The board inspects the public prior use device

Key points

• The Board, in translation; "During the oral proceedings, the board decided, pursuant to Article 117(f) and Rule 117 EPC, to take evidence by inspecting the prior use subject-matter "Comfort X3" in order to determine the behavior and stability of the belt tensioner flaps under dynamic loading of simulated impact forces from various directions, and thereby answer the crucial question of the suitability of the folding elements as side impact protection. "
• "During the inspection, a direct measurement of the length of the folding element of the "Comfort X3" child seat projecting beyond the outer wall was taken on the prior use subject-matter, which did not appear to be reliably possible based solely on the cited illustrations. The taking of evidence took place in the presence and with the participation of the parties. For the decision to take evidence and the results of the inspection, reference is made to the minutes of the oral proceedings."
• "The visual inspection led to the following results: ..."
• "For the reasons stated above, the Board does not consider the belt tensioner flap of the "Comfort X3" child seat to be suitable as impact protection within the meaning of feature M1.2 of granted claim 1. Features 1.3 to M1.5, which require the presence of side impact protection according to feature M1.2, are also not derived from this prior use."
• Regarding other features of claim 1: As can be seen from images IMG_0789 and IMG_791, attached to the minutes of the oral hearing, the entire extension of the flap element of the belt tensioner flap is 14.3 cm. This is undisputed."
• " The subject-matter of granted claim 1 is therefore novel over the prior use "Comfort X3", as correctly found by the Opposition Division."

EPO

 

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

T 2027/23 - (I) On evidence and appellate review of findings of fact

Key points

• "The appellant [proprietor] has challenged the findings of the opposition division regarding the public prior-use vehicle."
• "the board notes that, on appeal, the burden is on the party challenging a fact to demonstrate that the first-instance department erred in its finding of fact. "
• Note, this can be the appellant or respondent because a decision favorable to the respondent in the overall result can still contain findings of fact in favour of the appellant. 
• "In doing so, the party must specifically point to each alleged error in the department's findings of fact or in its evaluation of the evidence and set out the reasons why this is considered erroneous. Only if the party succeeds in discharging this burden and demonstrating such an error will the board establish the facts on its own if this is necessary for reaching a decision (see T 1138/20, Reasons 1.2.5)."
• Of course, pointing out one error is sufficient, and the board will then review the specific alleged fact that is affected by that error in the OD's evaluation of the evidence.
•  "The case law of the Boards of Appeal has identified a non-exhaustive list of typical situations where a finding of fact may be overruled, namely (i) failure to take into account essential points, (ii) relying, for the conclusion, on irrelevant subject-matter, or (iii) violation of the laws of thought, for instance in the form of logical errors and contradictions in its reasoning (T 1418/17, Reasons 1.3; see also T 42/19, Reasons 3.2 and T 1138/20, Reasons 1.2.5)."
• The list is helpful, but precisely because of that, we should not forget it is a non-exhaustive list.
  
  
• " The appellant requested that the testimony of Mr. Wieser should be disregarded in its entirety, because it was not credible and consequently the witness' credibility should be re-assessed and some statements in the decision under appeal  should be disregarded."
• " The board, first of all, notes that according to the appealed decision, the witness' credibility was not questioned by the proprietor (Reasons 2.1.2). Lack of credibility can thus not be an argument for discarding the witness' statement."
• As a general rule, this statement could be correct (Art. 12(6)(s.2)), but there could be exceptions.
  
  
• " The appellant further highlighted the fact that the information provided by the witness was handed to him by other people and was based on documents collected many years after the sale [which was in 1987]."
•  The board considers that this was correctly recognised by the opposition division. It was precisely for this reason that the opposition division considered the probative value of the testimony to be limited. The opposition division therefore prudently based its decision not only on Mr. Wieser's testimony, but also on Mr. Noe's affidavit (D10a) that confirmed, independently from Mr. Wieser's testimony, that the "Feuerwehr Tauberbischofsheim", in 1987, received from the company "Metz" a vehicle with a turnable-ladder mounting and the corresponding operation manual D9, without confidentiality obligations; [photos and vehicle registration certificate] " 
• Note, if the proprietor wished to challenge the affidavit of Mr. Noe, he should have requested a witness hearing of Mr Noe.
•  "Finally, the mere fact that other witnesses could have been offered does not call into question the credibility of the witness." 
• This sentence could require some analysis.
  
  
• On the inspection of the vehicle by the OD
• From the minutes (see p.29 of  PDF of the minutes):  "The oral proceedings were interrupted at 10:22 to allow the participants to move outside the building of the EPO, where the vehicle was parked." See also p.48 of the PDF for a protocol of the inspection. 
• 
  
  (I acknowledge that many younger colleagues may no longer recognise the building, never having had oral proceedings in it). 
• " The appellant argued that there was insufficient evidence that the vehicle inspected in the course of the oral proceedings before the opposition division was the one sold to the fire brigade in 1987 ...
• The protocol of the inspection, page 48, mentions that a type plate with the year 1987 was observed inside the inspected vehicle. 
• 
  
• Standard of proof
• "With regard to the fifth point concerning the applicable standard of proof, the board notes that in the case at issue the evidence does not lie exclusively within the sphere of the respondent. Indeed, the vehicle was received by the fire brigade and was in the brigade's possession and was later sold to a third party. Even if the board had been minded to apply the standard of "up to the hilt" or "beyond reasonable doubt" in cases where evidence was in the exclusive possession of the respondent, there would be no place for such application under the factual circumstances of this case. 
• Note, the company selling the vehicle, Metz, was later acquired by the current opponent.
• "In any event, the present board, in a previous decision (see T 1138/20, Reasons 1.2.1), held that regardless of the specific circumstances of the case, only one standard of proof should apply, namely that the deciding body, taking into account the circumstances of the case and the relevant evidence before it, at the end of the day, should be convinced that the alleged fact had indeed occurred (as confirmed in T 733/23, Reasons 3.2, but see also T 2463/22, Reasons 4.5.10 and 4.5.12 in that regard)."
  
  
• Confidentiality
• The Board, obiter it seems: "manual D9 was made available to the staff of the fire brigade who are certainly members of the public. The fact that these members of the public should not make the manual available to competitors does not change the fact that at least some members of the public have already taken notice. It is not necessary for a document, contrary to what the appellant seems to argue, to be made available to all and sundry for it to be considered "publicly available". Instead, it is sufficient for the document to be made available to some (or even one) member of the public. In the case at issue, this was undoubtedly so."
• The above remark was obiter and given the point below, not critical to the case. Nevertheless, I doubt it is correct. If the (head of the) Firebrigade Department (as the recipient of the manual) had signed a secrecy agreement, then the manual is not public, and the employees (volunteers or not) of the fire brigade were not 'members of the public'. Also, a government body can bind itself to secrecy (contractually, vis-à-vis suppliers). Evidently, it still is an organisation under public law in such a case. Its employees are possibly public officers or civil servants, but not members of the public in the sense of Art 54 EPC in respect of the secret information. 
•  "To prove an obligation of secrecy, the appellant further referred to the copyright notice on pages 2 and 4 of document D9, which reads in relevant part:"... Ohne unsere schriftliche Genehmigung dürfen sie nicht kopiert oder vervielfältigt werden, auch nicht dritten Personen, insbesondere Wettbewerbern mitgeteilt, oder zugänglich gemacht werden."
• " the board first notes that copyright notices can be found in almost all published books without the readers of such books being thereby bound to secrecy. "
• I don't know if the cited sentence is just a normal copyright notice. On the other hand, it is not a signed NDA either. 

EPO 

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

T 2048/22 - G 1/24 for Art. 123(2)

Key points

• "Opponent 1 raised several objections of added subject-matter, as follows. It argued that the application as filed did not contain any basis for two kinds of pores or perforations, namely co-aligned and common pores or perforations as required by claim 1 as granted."
•  "when construing this feature in the light of the description of the patent (see in this respect decision G 1/24 of the Enlarged Board of Appeal, Order), the skilled person would have established directly and unambiguously that the same pores or perforations are intended. "
• " Contrary to opponent 1's view, the board further holds that the term "pores or perforations" in claim 1 as granted creates ambiguity since it is unclear whether it expresses two alternative items or the same item. However, the board concurs with the patent proprietor's view that the skilled person, when construing this term in the light of the description of the patent (see in this respect decision G 1/24 of the Enlarged Board of Appeal, Order), would have directly and unambiguously established that pores and perforations indicate the same entity. This conclusion results for example from reference sign 4: ... "
•  "For these reasons, the board concluded that the amendments to claim 1 of the application as filed contained in claim 1 of the patent as granted do not lead to any added subject-matter. Therefore the ground for opposition pursuant to Article 100(c) EPC does not prejudice maintenance of the patent as granted."

EPO 

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

T 1815/23 - Prima facie and bona fide

Key points

• The proprietor submits amended claims before the Rule 116 date, in reply to a new objection under Art. 123(2) raised by the OD in the preliminary opinion,  and submits a correction of clerical errors in those claims after the Rule 116 date. How should the OD consider admissibility?
• The Board, in translation: The requests pending at the beginning of the oral proceedings thus constitute a timely response to the objection of inadmissible amendment first raised in the summons, and also filed within the time limit, so that, contrary to the Opposition Division's view [...] these requests were not late. Therefore, the Opposition Division had no discretion in admitting the requests, but should have admitted them into the proceedings and examined them in detail.
• The Board, in the original German: " Die von der Einspruchsabteilung vorgenommene prima facie-Prüfung war deshalb nicht ausreichend und benachteiligte die Beschwerdeführerin in unzulässiger Weise, da der von ihr gemachte bona fide Versuch, den Mangel der vermeintlich unzulässigen Änderung zu beheben, nicht vollumfänglich geprüft wurde.""
• Hence, if the amended claims are a timely and bona fide response to an objection, they must be examined on the merits (and hence admitted). 

EPO 

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

On oral proceedings - Teaching of Ptahhotep

The beneficial role and remedial effect of oral proceedings in judicial conflict resolution, i.e., of the judge listening to your case, were recognised already at the dawn of civilisation, in the Egyptian society more than 4000 years ago, as the following fragment shows.  

• If you are to be a [magistrate]
  be patient in your hearing when the petitioner speaks,
  do not halt him until his belly is emptied
  of what he had planned to have said.
  The victim loves to sate his heart
  even more than accomplishing what he came for -
  if a petition is halted,
  people say 'but why did he break that rule?'.
  Not everything for which he petitions can come to be,
  but a good hearing is soothing for the heart.

Teaching of Ptahhotep / The Instruction of Ptahhotep is an ancient Egyptian literary composition by the Vizier Ptahhotep around 2375–2350 BC (!) during the rule of King Djedkare Isesi of the Fifth Dynasty. (https://en.wikipedia.org/wiki/The_Maxims_of_Ptahhotep) 

Source of the translation: https://www.ucl.ac.uk/museums-static/digitalegypt/literature/ptahhotep.html with an edit marked by square brackets. 

A later dating of the composition is 1991–1802 BC (Twelfth Dynasty). (see here https://www.ucl.ac.uk/museums-static/digitalegypt/literature/ptahhotep.html)