R 0006/20 - (II) Art. 12(4) RPBA 2007

Key points

•  In this petition for review case, the Board did not admit evidence of a public prior use that was filed in appeal under the "could have been filed" prong of Art. 12(4) RPBA 2007 (now Art. 12(6) second sentence RPBA). The opponent/petitioner argues, essentially, that Art.12(4) RPBA violates Art. 113(2) EPC and Article 114(2) EPC (as I understand it).
• The Enlarged Board reviews the preparatory documents of the predecessor of Art.12(4) RPBA 2007, namely Article 10a(4) RPBA 2003. 
• " Article 12(4) RPBA 2007 setting a lower threshold for non-admittance regarding a party's conduct in the prosecution than abuse of process that the petitioner suggested is in line with Articles 114(1) and 113(1) EPC. " 
• The Enlarged Board does not expressly recall that "could have been filed" in Art. 12(4) RPBA is interpreted as "should have been filed in the first instance proceedings". However, understood in that way, general compliance with Art.113(1) EPC and Article 114(2) EPC seems to be a given, especially when adding the clause, as is present in current Art.12(6), " unless the circumstances of the appeal case justify their admittance".

EPO 

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

Visser Supplement 2023 and December online update

Key points

• The supplement to Visser's Annotated EPC 2023 for EQE candidates is now available here.
  
  
• The new online updated version is available at Kluwer IP Law (if your organization has a subscription): https://www.kluweriplaw.com/document/TOC_Visser_AEPC 
• I personally spent some time on the discussion of the Vienna Convention in the Preamble chapter here, inspired by J5/23. Of course, we also did all the regular updating.

R 0006/20 - (I) Review of decision to hold submission inadmissible

Key points

• The right to be heard under Art.113(1) EPC entails more than an obligation for the Board to listen to parties: the Board's decision should also show that your submissions were considered. However, can it be a violation of the right to be heard by a decision of the Board to hold a submission inadmissible? In such a case, the Board's written decision contains some consideration of the submission. 
• R 10/18 held that: "Article 113(1) EPC is infringed if the board does not address submissions that, in its view, are relevant for the decision in a manner adequate to show that the parties were heard on them, i.e. that the board substantively considered those submissions..."
• The Enlarged Board in the present case clarifies that "substantively considered"  means  "the Board considered the contents of those submissions", " with this consideration comprising matters - pertaining to admittance of facts, evidence and requests, and/or - relating to substantive law, i.e. the merits of a case."
• This headnote must be read in the context of the remaining part of the discussion. In particular, it does not mean that there is never a  violation of the right to be heard if a submission is rejected as inadmissible after having the (movant) party on the admissibility. 
• The Board " In section V.B.3.4.3 of the Case Law it is said: The following issues can not be considered in review proceedings: ... - whether to admit a new request (R 10/11, R 11/11, R 13/11, R 4/13) or a new document (R 10/09, R 17/11) under Art. 12 RPBA 2007; or under Art. 13(1) RPBA 2007 (R 1/13, R 4/14, R 6/17) ..."
• "In addition, in R 17/10 (in point 2.4 in fine), it was held: The admission of late-filed documents and/or other evidence is a matter for the board's discretion and, therefore, as such not subject to review under Article 112a EPC."
• However, CLBA V.B.3.4.3  also identifies a second line in the case law, as the Board notes: " The exercise of discretion is only subject to review if arbitrary or manifestly illegal (R 10/11 [point 5.2]), thereby involving a fundamental violation of the right to be heard (R 9/11 [point 3.2.3]; see also R 17/11" 
• " Under the essence of this case law, merely hearing a party on admittance does not suffice: the decision to not admit must be neither arbitrary nor manifestly illegal." 
• Notably, this means that the exercise of discretion by the Board on the admissibility of submissions is subject to review, though the standard of review is a high one, cf. G 7/93 r.2.6 for review by the Board of Appeal of a first-instance decision to hold a submission inadmissible. 
• In my view, the second line in the case law is clearly the right one. Not setting aside a decision of a Board of Appeal that holds a submission inadmissible on arbitrary or manifestly illegal grounds defeats the purpose of Art. 112a(2)(c) EPC.
• In the present case, the Enlarged Board acknowledges these two lines of case law but does not choose between them. The Enlarged Board applies both lines of case law, i.e. effectively reviews under the "neither arbitrary nor manifestly illegal" standard.
• "Under the essence of this case law, merely hearing a party on admittance does not suffice: the decision to not admit must be neither arbitrary nor manifestly illegal. These criteria are met in the case in hand: first, the applicable legal provision of Article 12(4) 2007 complies with both the principle of ex officio examination (Article 114(1)) and the right to be heard (Article 113(1) (see point 3.2.2(a) below), and, second, so does its application in the case in hand". 
•  I wonder if a referral under Art. 112 is possible to revolve the conflicting case law?  It would requite an extensive or dynamic interpretation of  Art.112. 

EPO 

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

T 1076/21 - (I) Burden of proof in appeal

Key points

• This post serves to give an impression of the decision rather than a summary. I recommend reading the entire decision to interested readers.
  
•  "With reference to T 585/92, Reasons 3.2, the respondent argued that the appellant bore the burden to prove that the patent was sufficiently disclosed because the opposition division had revoked the patent."
• "On the basis of an in-depth analysis of the relevant case law, the board has concluded that the burden of proof regarding the facts, arguments and evidence on the substance (which initially lies with the opponent) does not shift to the proprietor just because the patent has been revoked due to an alleged insufficient disclosure."
• "If a material fact is not or cannot be proven, a decision is taken on the basis of who bears the relevant burden of proof. The fact that the real position cannot be established is to the detriment of the party which bears the burden of proof for this fact, among other things because the other party is given the benefit of the doubt. In principle, each party bears the burden of proof for the facts it alleges (T 63/06, Reasons 3.1 and 3.2)."
• "the initial burden on the opponent to provide facts, arguments and evidence for an assertion of an insufficient disclosure (in the following: "burden of proof on the substance") may shift to the patent proprietor once the opponent has successfully discharged its burden of proof by submitting sufficient facts, arguments and evidence to rebut the presumption of sufficiency resulting from the information contained in the patent specification (T 338/10, Reasons 12; T 2218/16, Reasons 32.2)."
• "Linked to the burden of proof is the "burden to substantiate a case" (Rule 76(2)(c) EPC in opposition proceedings; Rule 99(2) EPC and Article 12(3) RPBA in appeal proceedings). Thus, the opponent first has to provide facts and argue why these facts support the assertion that a skilled reader of the patent using their common general knowledge would be unable to carry out the invention (T 182/89, Reasons 2). This burden to substantiate facts and arguments is then followed by the burden to prove these facts, which is normally done by submitting evidence."
• Note that even though evidence needs to be indicated only in a notice of opposition, the picture of substantiation followed by evidence appears to relate more to a conceptual framework than to the real chronology of events in typical opposition proceedings. Usually evidence is submitted with the notice of opposition.
  
• "when distinguishing the "burden to substantiate a case" from the "burden of proof on the substance" it can be clearly deduced from the case law that after a decision by the opposition division allowing an objection of insufficiency, it is down to the patent proprietor to substantiate on appeal why that decision is wrong. "
• "Under Article 12(3) RPBA, the statement of grounds of appeal has to set out clearly and concisely the reasons for setting aside the decision under appeal. The appellant (in this case the patent proprietor) therefore bears the burden to substantiate the appeal. Yet an appeal case need not necessarily be substantiated by submitting facts and evidence that counter the arguments and evidence presented by the opponent. It may also be substantiated by submitting why the opposition division's reasoning on insufficiency was flawed "
• "T 1911/17, Reasons 24, sets out that the burden to substantiate the appeal must be distinguished from the burden of proof on the substance. The fact that the decision under appeal may be wrong for reasons other than a misjudgement on the substance can be deduced from e.g. decision T 942/18 (Reasons 2.2 to 3.6), T 55/18 (Reasons 1.2 and 2.2) or T 1596/16 (Reasons 2.3)."
• "An appeal against a revocation of a patent for insufficient disclosure need not be based on the submissions of counter-evidence by the patent proprietor, as can also be seen in cases where the opposition division's decision was set aside. In many cases the board based its decision not on new evidence but on other arguments why the impugned decision was erroneous."
• "The respondent [opponent] therefore did not provide the evidence required for substantiating serious doubts; it did not discharge its burden of proof on the substance " - in the first instance proceedings, I understand.
• The opponent filed a declaration after the summons in appeal.  "The joint expert declaration of Annex 1 contains images from scientific documents which are not part of the proceedings, along with in-house experiments."
• The Board does not admit it. There are no exceptional circumstances. "a board agreeing with the other party's arguments does not amount to exceptional circumstances; this may happen and has to be expected in any inter partes proceedings. Therefore, this evidence should have been filed in the opposition proceedings or at the latest with the reply to the appeal".

EPO 

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

T 2440/16 - The Board hears witnesses

Key points

• Board 3.3.06 hears witnesses concerning the alleged public prior use.
The Board, in machine translation: "The opposition was based, among other things, on the obvious previous use of a machine of the type Oasys OCL 600/3 for the production of laminated plastic cards with the serial number 42010 (previous use "Hythe Offset"). This objection was based, inter alia, on video D1.6 showing this machine in operation but recorded after the priority date and the associated affidavits of Mr. Bridger (D1.1) and Mr. Lane (D2.1)." The OD consisted of four members.
• "Although the opposition division admitted numerous late-filed documents in connection with the prior use "Hythe Offset" into the proceedings, it did not consider the prior use of the machine in the mode shown in video D1.6 before the priority date to have been proven."
• "With its statement of grounds of appeal, the appellant submitted a further statement by Mr Bridger (D32) and a written comment (D33) on video D1.6 and submitted, among other things, that the public prior use "Hythe Offset" shown in D1.6 had been proven."
• "[The appellant/opponent] requested, in the alternative, that Adrian Lane, Richard Bridger, Elliot Lamb, Steven Walker and Colin Stokes be heard as witnesses should the Board consider dismissing the appeal "
• The Board decided to hear the five witnesses (!). Notably, as the OD consisted of four members, the Board consisted of five members.
• The hearing took place on 27-28 April. The witnesses were heard on 27 April, from 09:45 to 11:55, giving 70 pages of transcript. After a break until 13:20, the evidence was discussed with the parties. The Board deliberated from 14:45 to 15:20 and concluded that the alleged public prior use was proven. Novelty was then discussed. The Board concluded that the main request was not novel; the patentee subsequently withdrew the main request and some auxiliary requests. 
• There were no objections to the remaining auxiliary request, and the Board's decision contains no substantive reasoning. (minutes)
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EPO 

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

T 3088/19 - Should have used the 45 min break

Key points

•  The Board finds that the proprietor should have filed the auxiliary request during the oral proceedings before the OD after the OD departed from the preliminary opinion.
• " Having requested a 45 minute interruption in oral proceedings, this having been granted and thereupon having filed replacement auxiliary requests, it seems that the proprietor had sufficient opportunity to fully consider its requests in reaction to the change of opinion of the opposition division. The Board thus sees this to have been the time when auxiliary requests 2 to 6, first filed on appeal, could and should have been filed. In this context, it should also be noted that parties must be prepared for the possibility that the Opposition Division may deviate from its preliminary opinion during the oral proceedings."
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EPO 

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

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.
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• 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.