Delta Patents

R 4/17 - Four is a party

Delta Patents Patent Law -



In the present case, the Opponent appealed the decision of the Opposition Division to maintain the patent as granted. The Board of Appeal sent three registered - but without advice of delivery - communications (notice of appeal; statement of the grounds of appeal; further letter) to the Respondent-Proprietor. In the absence of any response from the Proprietor to these letters, the Board of Appeal considered itself to be in a position to issue a decision revoking the patent without the need to hold oral proceeding. This decision of the Board was sent to the parties under cover of a registered letter with advice of delivery. 

The Proprietor filed a petition for review of the decision, arguing that it had no record of ever having received the first three letters, thus depriving him of his right to be heard.

The Enlarged Board now deals with this petition for review, and finds that in the present case, the Proprietor had, within the meaning of Article 113(1) EPC, no opportunity at all to comment on the grounds for the decision under review. This qualifies as a fundamental violation of his right to be heard.


Catchwords:
In the event of any dispute about whether a letter from the EPO reached the addressee or on which date, it is incumbent on the EPO to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee (Reasons, point 2).

[...] parties must be able to rely on the EPO complying with the relevant provisions of the EPC and, at least for the purposes of Article 113(1) EPC, they and their representatives have no duty to monitor the proceedings themselves by regularly inspecting the electronic file (Reasons, point 4).

In respect of the implausibility of the non-arrival of letters put forward by the Other Party the Enlarged Board considers that it cannot be expected that the Petitioner should prove a negative, that is the nonreceipt of a letter, or provide a plausible explanation for non-receipt (Reasons, point 4). 


Reasons for the decision

Formal requirements for admissibility

1. The Petition fulfils the formal requirements for admissibility (time limits, form, Rules 106, 107 EPC, and payment of fees). Hence, the petition is admissible.

Allowability of the petition

2. Rule 126(2) EPC provides that in the event of any dispute about whether a letter from the EPO reached the addressee or on which date, it is incumbent on the EPO to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee, as the case may be. In the present case the Office was not able to establish by internal investigations that the critical communications reached their destination, as required by the applicable cited Rule.

3. In the absence of any relevant evidence from outside the EPO, the Opponent-Appellant’s notice of appeal, statement setting out the grounds of appeal and its letter must be considered not to have been communicated to the Petitioner. Such communication is required by Rule 100(1) in conjunction with Rule 79(1) EPC.

4. Although the notice of appeal, statement setting out the grounds of appeal and letter were available to the public by way of electronic file inspection, parties must be able to rely on the EPO complying with the relevant provisions of the EPC and, at least for the purposes of Article 113(1) EPC, they and their representatives have no duty to monitor the proceedings themselves by regularly inspecting the electronic file. There is also no evidence that the Petitioner learnt of these documents by other means.

In respect of the implausibility of the non-arrival of letters put forward by the Other Party the Enlarged Board considers that it cannot be expected that the Petitioner should prove a negative, that is the non-receipt of a letter, or provide a plausible explanation for non-receipt (negativa non sunt probanda). The Other Party also suggested that an internal reorganisation of the Petitioner could have been the cause of the non-receipt of the documents. The Enlarged Board notes that the decision under review was sent to “Rhodia Chimie, Direction de la Propriété Industrielle”, that is to the same addressee, and at the same address, as all the communications issued by the Board of Appeal between 25 October 2011 and 12 April 2017. The EPO’s file shows that between 25 October 2011 and 11 April 2012, and on 18 April 2017 the Petitioner received the EPO's communications. It is only in the period 11 June 2012 to 23 August 2012 that mail was apparently not received by the Petitioner. Thus the same entity at the same address has received communications both before and after the period of apparent non-receipt. The Petitioner has not submitted any comment on this argument. From the evidence before the Enlarged Board it does not appear that during the relevant time a reorganisation of the Petitioner took place. However, this argument is of no bearing as long as the EPO is not in a position to establish that the letters reached their destination. The issue would have been different if, as a matter of evidence, the letters were known to have reached their destination in the sense of Rule 126(2) EPC, but were not processed by the addressee due to an internal reorganisation, i.e. under circumstances within the control of the addressee.

5. It follows that in the appeal proceedings under consideration the Petitioner had, within the meaning of Article 113(1) EPC, no opportunity at all to comment on the grounds for the decision under review. This qualifies as a fundamental violation of Article 113(1) EPC pursuant to Article 112a(2)(c) EPC, so that the petition and the request for reimbursement of the fee for the petition (Rule 110 EPC) have to be allowed (see R 7/09, points 4 to 6 of the Reasons).

Order

For these reasons it is decided that:

1. The decision under review is set aside and the proceedings before Board of Appeal 3.3.03 are re-opened.

2. Reimbursement of the petition for review fee is ordered.

This decision R 0004/17 (pdf) has European Case Law Identifier: 
ECLI:EP:BA:2018:R000417.20180129. The file wrapper can be found here. Image "Mail Box" courtesy of digitalart at FreeDigitalPhotos.net (no changes made).


T 447/13 - Trivially or seriously ill?

Delta Patents Patent Law -

Better send in a doctor's certificate?

In the present case, the professional representative became ill before the scheduled OP, and excused him/herself by a phone call and subsequent letter indicating that he/she had "take[n] ill" while requesting the OP to be rescheduled. The request was refused by the ED for the reasons that the representative referred in his letter only to illness and not to serious illness, and that the request was not accompanied by a substantiated written statement indicating the reasons.

The Board now deals with this matter in appeal, and finds that the ED did not properly exercise its discretion but rather took an unreasonable approach based on a wrong principle.

Catchwords:
For the purposes of deciding whether to grant a request for postponement of oral proceedings on grounds of illness, the reference to "serious illness" in the Guidelines means an illness which is sufficiently serious to prevent the representative travelling to oral proceedings and presenting the case on the appointed day (Reasons, point 5.3).

Where a request for postponement of oral proceedings is refused on the ground that the request was not sufficiently substantiated, it is incumbent upon the Examining Division to explain why it considers the substantiation insufficient. In other words, it should state in clear terms what, in its opinion, should have been submitted or explained, but was not (Reasons, point 6.4).


Reasons for the Decision
1. The appeal is admissible.

2. Postponement of Oral Proceedings in General

2.1 According to Article 116(1) EPC, oral proceedings shall take place either at the instance of the European Patent Office if it considers this to be expedient or at the request of any party to the proceedings.

While the EPC contains no express provision for postponing duly appointed oral proceedings, requests for postponement are nevertheless received from time to time by the EPO, and it is the long-standing practice that the relevant department of the EPO has a discretion to grant or refuse such requests on their merits. In exercising this discretion, the principles to be applied - in the case of examining and opposition divisions - are set out in section E-III, 7.1 of the current Guidelines for Examination in the European Patent Office (November 2017). This corresponds to section section E-II, 7 of the Guidelines of June 2012, which would have been in force at the relevant date.

Essentially similar provisions are set out in a Notice from the European Patent Office concerning oral proceedings before the departments of first instance of the EPO (OJ 2009, 68).

The Boards of Appeal have also confirmed that the EPO has a discretion in this matter, and have further elaborated on how this discretion shall be exercised (Case law of the Boards of Appeal of the European Patent Office", 8th edition 2016, III.C.4.1).

2.2 According to the Guidelines, an Examining Division should allow a request for the postponement of oral proceedings only if the party can advance "serious reasons" which justify the fixing of a new date. Any such request must be accompanied by a sufficiently substantiated written statement indicating these reasons. One such reason indicated in the Guidelines is "serious illness".

3. Review by the Boards of Discretionary Decisions

3.1 In the present case the Examining Division exercised its discretion by refusing the request to postpone the oral proceedings. The appellant argues that the request should have been allowed, and that the refusal amounted to a substantial procedural violation.

3.2 Where a Board of Appeal is requested to review a decision of a department of first instance based on the exercise of a discretion conferred by the EPC, the principles to be applied are set out in the following passage from G 7/93:

"if an Examining Division has exercised its discretion under Rule 86(3) EPC against an applicant in a particular case ... it is not the function of a Board of Appeal to review all the facts and circumstances of the case as if it were in the place of the first instance department, in order to decide whether or not it would have exercised such discretion in the same way as the first instance department ... a Board of Appeal should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles ... or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion." (G 7/93, Reasons, point 2.6.)

3.3 Even if the discretion to grant or refuse a request for postponement of oral proceedings is not directly derivable from the EPC (unlike the discretion referred to in G 7/93), the Board believes that the same principles apply. It is therefore not the task of the Board to decide whether the Examining Division reached the correct decision in refusing postponement, but simply to judge whether it used its discretion in accordance with the right principles and in a reasonable manner (see e.g. T 2526/11, Reasons, point 2.2).

4. The Reasoning of the Examining Division

4.1 Although the applicant had filed a request for a postponement of oral proceedings, and this request was not subsequently withdrawn, the section of the contested decision entitled "Reasons for the decision" does not include any indication why this request was refused. The only reference to this matter is under points 8 and 9 of the "Facts and submissions" in which the contents of the brief communication faxed to the representative in response to the request are essentially repeated (see point V(5), above).

The Board can only conclude that point 9 of the "Facts and submissions" (and the communication referred to therein) represents the complete reasoning of the Examining Division in response to this request.

4.2 According to the Examining Division the request was refused as the the provisions mentioned in the Guidelines were not met. In particular:

(a) the representative referred in his letter only to illness and not to serious illness; and

(b) the request was not accompanied by a substantiated written statement indicating the reasons.

5. The Ground of "Serious Illness"

5.1 The Examining Division drew a distinction between illness and serious illness, and took the position that the failure of the representative to state explicitly that his illness was "serious" was a reason to refuse postponement.

5.2 Although the Guidelines cite "serious illness" (schwere Erkrankung, maladie grave) as a ground for postponement for oral proceedings, no definition of the meaning of "serious" is given.

Whatever meanings the term "serious illness" may have in other contexts, the Board's view is that within the framework of deciding whether to postpone an oral proceedings, "serious illness" can only be reasonably understood in relation to the sole relevant consideration, namely whether the representative would be well enough to travel and to present the case satisfactorily.

5.3 Hence, for the purposes of deciding whether to grant a request for postponement of oral proceedings on grounds of illness, the reference to "serious illness" in the Guidelines means an illness which is sufficiently serious to prevent the representative travelling to oral proceedings and presenting the case on the appointed day.

5.4 In the letter dated 5 February 2013, the applicant informed the Examining Division that "the representative on this case has been take[n] ill and is not able to attend the EPO for the Oral Proceedings scheduled for 6 February 2013 (tomorrow)". It was therefore for the Examining Division to decide whether this form of words was sufficient to establish that the illness was "serious" in the sense set out in the previous paragraph.

5.5 Instead, the Examining Division judged this matter according to a different criterion, namely that the representative "refers in his letter only to illness ... and not to serious illness as mentioned in said passage of the Guidelines" (emphasis in the original). Judging that the respective requirement of the Guidelines has not been met merely because the illness has been described in a way which departs from the literal wording of the Guidelines constitutes, in the opinion of the Board, an unreasonable approach based on a wrong principle.

6. Alleged lack of substantiation

6.1 The Examining Division considered that the request was not "accompanied by a sufficiently substantiated written request indicating the reasons" (Facts and submissions, point 9).

There is no doubt that the applicant did substantiate the request, at least to some extent. Postponement was requested on the grounds that the representative had been taken ill, and the wording "take[n] ill" together with the use of "URGENT" in the heading, would appear to imply that the representative had come down with a sudden illness. Moreover, the illness was such that the representative was "not able to attend the EPO for the Oral Proceedings" scheduled for the following day.

6.2 The Examining Division decided that this degree of substantiation was insufficient. The Board is not called upon to decide whether the Examining Division was or was not correct in this matter, but merely to decide whether the Examining Division arrived at this conclusion in a reasonable way.

6.3 The Board can accept that the Examining Division faced the difficulty that the Guidelines do not define what "sufficiently substantiated" means in the case of illness. Nevertheless, the Examining Division must presumably have taken a view on what would constitute sufficient substantiation in this regard, otherwise it would not have been possible to conclude that the actual substantiation provided was insufficient.

6.4 Where a request for postponement of oral proceedings is refused on the ground that the request was not sufficiently substantiated, it is incumbent upon the Examining Division to explain why it considers the substantiation insufficient. In other words, it should state in clear terms what, in its opinion, should have been submitted or explained, but was not.

6.5 In the present case, neither in the decision, nor in the communication sent in response to the representative's letter, is there a clear statement of what the Examining Division considered to be required to substantiate the illness, or what was considered to be lacking, which rendered the request insufficiently substantiated.

6.6 It is true that the letter from the representative was not accompanied by any proof of illness, such as a certificate from a doctor, nor did it specify the nature of the illness (although the appellant states that this was discussed over the telephone). There is, however, no explicit requirement in the Guidelines to provide a medical certificate or a written description of the illness, and it does not appear that the applicant was ever asked to provide either.

It is possible that the Examining Division nevertheless took the view that a medical certificate or a written description of the illness was required, and that it was the failure to meet this purported requirement which resulted in the written statement being deemed to be insufficiently substantiated. If this was the case, then it should have been made clear to the applicant (at least in the decision) that this was the basis of the finding of insufficient substantiation.

6.7 It is also true that the representative's letter did not explain why the case could not be allocated to another European patent attorney within the company. However, there is no indication on file that this consideration played any role in the case, and no statement in the decision that this had any bearing on the finding of insufficient substantiation.

6.8 The proper exercise of discretion requires that it should be apparent, at least implicitly, that the decision has been reached based on reasonable considerations and correct principles. To the extent that the decision not to postpone oral proceedings was based on an alleged lack of substantiation, the Examining Division exercised its discretion improperly in that it is not apparent why the written statement of the representative was considered insufficiently substantiated.

7. Consequences

7.1 For the reasons given above, the Board judges that the decision not to postpone oral proceedings was based on a flawed exercise of discretion, in relation to both the question of "serious illness" and the alleged insufficient substantiation. The request for postponement was therefore unreasonably refused.

The only realistic alternative to postponement, which would nevertheless have allowed the applicant to be represented at oral proceedings, would have been to allocate the case to another European patent attorney (e.g. within the company). In the present case, however, in which the representative was apparently taken ill the day before oral proceedings, the Board's view is that it would not have been reasonable to expect this, both on practical grounds (travel arrangements etc.) and in view of the time required for a proper preparation of the case.

7.2 The refusal of the request for postponement therefore had the direct consequence that the appellant was unrepresented at the oral proceedings, and since the Board regards this refusal as being based on an unreasonable exercise of the Examining Division's discretion, the applicant's right to be heard was violated. This conclusion applies a fortiori since it was the stated position of the Examining Division that the scheduled oral proceedings represented "the opportunity to present comments and arguments in accordance with Article 113(1) EPC" in relation to the issues first raised in the telephone call which took place a matter of days before the scheduled date of oral proceedings (see points V(1)-V(3), above).

7.3 The Board regards this as a fundamental deficiency in the first instance proceedings, and since no "special reasons" within the meaning of Article 11 RPBA are apparent, the case is remitted to the department of first instance for further prosecution (Article 111(1) EPC and Article 11 RPBA).

In the remitted procedure, the applicant should be afforded the opportunity to present its case at oral proceedings.

8. Requested Refund of the Appeal fee

8.1 According to Rule 103(1)(a), "the appeal fee shall be reimbursed in full ... where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation".

8.2 In the present case the appeal has been found to be allowable, thus satisfying the first prerequisite for reimbursement.

8.3 Moreover, as set out above, the refusal to postpone the oral proceedings was based on a flawed exercise of discretion, having the consequence that the appellant's right to be heard was infringed, which the Board regards as a substantial procedural violation. Reimbursement of the appeal fee is therefore equitable, as the appellant was forced to file an appeal and pay the appeal fee in order to assert its rights under Article 113(1) EPC.

Order

For these reasons it is decided that:

The decision under appeal is set aside.

The case is remitted to the department of first instance for further prosecution.

The appeal fee shall be reimbursed.

This decision T 447/13 (pdf) has European Case Law Identifier: ECLI:EP:BA:2018:T044713.20180205. The file wrapper can be found here.

R 8/16 - A plurality of petition grounds

Delta Patents Patent Law -

A petition for review with many grounds...

In opposition proceedings, the patent was upheld with amended claims. During appeal by the proprietor and an opponent, the Board revoked the patent for added subject-matter.

The proprietor-appellant filed a petition for review under Article 112a EPC against the decision of the Board. The petition lists various grounds, as enumerated below.

The EBA discusses the admissability and allowability of these grounds, including whether a counter-argument put forward during oral proceedings also represents a formal objection under Rule 106 EPC (admissibility of ground D), whether the right to be heard is violated if an admission of a request is not reasoned (allowability of ground C), whether the BoA is free to determine the order in which the requests are discussed (allowability of ground C), and why it is needed for the petition to already contain the specific arguments w.r.t. a fundamental violation of Article 113 EPC (rather than those being specified in a later response or during oral proceedings) (allowability of ground D)

Catchwords:
1. Only parties adversely affected by a decision may resort to a procedure under Article 112a EPC. The term 'fundamental violation' in Article 112a(2)(c) EPC also must be read in this light. An alleged violation cannot be fundamental, in the sense of 'intolerable', if it does not cause an adverse effect. (Reasons, point 23).

2. The principle of party disposition expressed in Article 113(2) EPC does not extend so as to permit a party to dictate how and in which order a deciding body of the EPO may examine the subject-matter before it. The only obligation on the EPO is not to overlook any still pending request in the final decision. A Board has no particular duty to give reasons why it chose to proceed as it did (Reasons, point 25).

3. A Board has no obligation to peruse the whole file of the first instance proceedings. It is the duty of the parties to raise issues again in the appeal proceedings, to the extent necessary, as stipulated by Articles 12(1) and (2) RPBA: "Appeal proceedings shall be based on [the submissions of the parties filed in the appeal proceedings, which] ... should specify expressly all the facts, arguments and evidence relied on" (Reasons, point 38).

The petition grounds:
XI. Right to be heard violations, Art. 112a(2)(c) and 113 EPC

A. The written decision of the Board contained no reasons why the claims as upheld by the Opposition Division were not allowable, thus not permitting the petitioner to understand why the decision under appeal was reversed.

B. The Board's decision did not explain what happened to the earlier withdrawn requests, but only referred to the petitioner's final requests that it confirmed at the end of the oral proceedings.

C. The decision contained no reasons why the main request was admitted, and why this decision was only made after the decision not to admit the later withdrawn auxiliary requests. This lack of reasons in the decision violated the petitioner's right to be heard, because arguments need not only be heard, but also must be acknowledged in a decision of the EPO.

D. The Board did not consider the main arguments of the petitioner, why the "only two bearing" feature does not add subject-matter. (...). The petitioner also submitted that the arguments not mentioned could well have changed the outcome of the decision.

XII. Fundamental procedural defect, Art. 112a(2)(d) EPC

E. The Board did not decide on a request pursuant to Rule 104(b) EPC, in that the main request was discussed and decided on only after a discussion and decision on the claims as upheld. In this respect, the petitioner raised an objection under Rule 106 EPC.

XIV. Further procedural violations

F. The petitioner was led into the inescapable trap of Article 123(2)/(3) EPC by the Examining Division, i.e. the European Patent Organisation itself provoked the error.

G. The petitioner lost its patent on a 'formalistic issue', against the spirit of Article 4(3) EPC, and after having spent considerable sums.

H. The considerations underlying petition grounds F and G were not taken into account by the Board, when revoking the patent, in full knowledge of pending parallel infringement actions.

Reasons for the Decision
1. The petitioner is adversely affected by the decision under review, and the petition was filed in accordance with the formal requirements pursuant to Article 112a(4) EPC and Rule 107 EPC.

Admissibility of the petition (Rule 106 EPC)

2. The petitioner explicitly stated that petition grounds A to D concern missing reasons in the written decision of the Board. The same is implicitly argued for the petition ground H. The EBA is satisfied that the petitioner could only have realised upon receipt of the written decision that its arguments were ignored by the Board, or that the decision did not deal at all with important issues. The EBA is satisfied that the petition is not clearly inadmissible in respect of these grounds. (Rules 106 and 109(2)(a) EPC).

3. Given that there is at least one admissible petition ground, the petition is admissible.

Petition ground E - Fundamental procedural defects (Article 112a(2)(d) EPC): Decision on an auxiliary request before the main request, no decision on a request

4. It is apparent from the nature of the objection and it is consistent with the minutes that the petitioner was aware of the alleged procedural defect and it would have been possible to raise an objection under Rule 106 EPC in the oral proceedings.

5. The EBA pointed out in its communication (see point XIV above) that contrary to the statement of the petitioner (page 4, end of 2nd paragraph of the petition), there is no evidence in the file that such an objection was raised by the petitioner in the appeal proceedings. The EBA also pointed out that a correction of the minutes was apparently not requested, nor did the petitioner call the correctness of the minutes into question in the petition itself.

6. The petitioner submitted in its response to the communication (point XV above) and also in the oral proceedings before the EBA that a proper objection was made, as testified by its representative (point XVI above), and that he saw no need to raise the question of the correctness of the minutes, either separately or later in the petition. In this respect the petitioner argued that unlike the decision, the minutes have no legal force, and requesting their correction is merely a possibility, but it is not obligatory.

7. The EBA considers that under the circumstances as presented by the petitioner, he would have been expected to object immediately to an omission from the minutes of his objection, already in view of Rule 124(1) EPC. There can be no doubt that a formal objection under Rule 106 EPC, entailing serious legal consequences, is a 'relevant statement' of a party for the purposes of Rule 124(1) EPC. For all parties, and also for the EBA the minutes of the oral proceedings serve as the authentic record of such relevant statements. In this regard, reference is made to the Case Law of the Boards of Appeal (CLBA) 8th Edition, 2016: Chapter IV.F.3.5.4., and the decisions cited therein, see in particular R 0006/14 of 28 May 2015, Point 7 of the Reasons. While it is true that there is no strict formal obligation on parties to request a correction, not doing so will leave them with the burden of proof against the minutes in case of dispute. The EBA notes that even the Guidelines explicitly foresee that an affected party requests a correction of the minutes, see Guidelines, Part E, Chapter II.10.4, from the version June 2012 onwards, and essentially unchanged since. The EBA is well aware that the Guidelines are only binding for the proceedings of the first instance, nevertheless it illustrates that diligent parties can be expected to take certain steps even in the absence of specific provisions in the Convention itself.

8. The EBA finds it plausible and as such not improbable that the petitioner argued in the oral proceedings before the Board that the order of discussion of the requests should be different. The minutes are silent in this regard. However, a mere argument against the proposed procedure of the Board cannot be considered as a formal objection under Rule 106 EPC. Rather, such an objection must be made in a form so that it is immediately and doubtlessly evident that the objection is a formal one under Rule 106 EPC. Reference is made to the CLBA 8th Edition, 2016: Chapter IV. F.3.5.2.

9. In fact, the petitioner conceded at the oral proceedings before the EBA that an explicit and unmistakeable reference to Rule 106 EPC or to a violation of the right to be heard were possibly not made in the context of the discussion on the order of the requests. In this respect the petitioner contends that this was not necessary, as the Board had an inherent obligation to correctly interpret the petitioner's submissions. The EBA rejects this argument. Contrary to the opinion of the petitioner, the Board had no obligation to interpret a simple counter-argument made in the course of the discussion as a formal objection under Rule 106 EPC.

10. The petitioner also submitted that an objection under Rule 106 EPC was not possible in the sense of this rule, as the expected objection could not have been raised in the appeal proceedings after the decision by the Board to discuss the main request only after the auxiliary requests, because the objection would have become obsolete. The EPA rejects this argument. Firstly, this submission plainly contradicts the statement in the petition, namely that an objection was actually made. Secondly, such an objection under Rule 106 EPC can and should be made as long as the cause of the objection can be remedied by the Board. This was the case here. It is clear that the oral proceedings were not over even after the discussions on the main request, and the Board had the power to re-open the debate on either the main or the auxiliary requests.

11. The petitioner submitted that the petition ground E can also be subsumed under Article 112a(2)(c) EPC, and as such did not require an objection under Rule 106 EPC in order to be admissible. This is incorrect as Rule 106 EPC explicitly refers to all the petition grounds under Article 112a(2)(a) to (d) EPC (emphasis by the EBA), i.e. also including the petition ground under Article 112a(2)(c) EPC.

12. In summary, the EBA holds that under the circumstances of this case an objection under Rule 106 EPC could and should have been filed, but was not. Therefore, the petition ground E is inadmissible pursuant to Rule 106 EPC, and as such clearly inadmissible for the purposes of Rule 109(2)(a) EPC.

Further procedural violations

Petition grounds F and G - Error by the European Patent Organisation/ Loss of patent on a 'formalistic issue'

13. The EBA understands the objections F and G as petition grounds on their own, and not merely additional arguments in support of the other and separate petition grounds. However, this does not change the fact that they cannot be subsumed under any of the provisions of Article 112a(2) EPC, as pointed out by the EBA in its communication.

14. The petitioner argued that the petition grounds F and G are to be subsumed under Articles 112a(2)(c) and 113 EPC, the latter being expressions of the requirement for a fair procedure in general. The principle of a fair procedure is also recognised in the Contracting States and as such is a principle which must be taken into account by the EPO pursuant to Article 125 EPC. Furthermore, the present case was special, so that there was room to treat the petition grounds F and G under Article 112a(2)(c) EPC.

15. Article 113 EPC is restricted to two specific aspects of the procedure before the EPO, and in this manner, Article 112a(2)(c) EPC is similarly restricted to the violation of these two specific aspects, see also below at point 18. The EBA concurs with the petitioner that Article 113(1) EPC in particular concerns an aspect of a fair procedure. However, it is not possible to draw the inverse conclusion, namely that any unfairness in the procedure, whether real or merely perceived, will immediately and automatically mean a violation of Article 113 EPC. In this manner, it is not apparent to the EBA why the petition grounds F and G would fall under Article 112a(2)(c) EPC. It is settled case law of the Enlarged Board of Appeal that Article 112a EPC contains an exhaustive list of petition grounds, see CLBA 8th Edition, 2016: Chapter IV.F.3.3.2. Article 125 EPC expressly states that it is only applicable in the absence of procedural provisions in the Convention. This is not the case here, and already for this reason Article 125 EPC cannot be the basis for extending the scope of Article 112a EPC. These considerations hold also for 'special' cases, apart from the fact that it is not apparent to the EBA what would make the present case special.

16. As stated in the communication of the EBA, it is manifest that none of the provisions of Articles 112a(2)(a),(b) or (e) EPC are applicable, while Article 112a(2)(d) EPC is not applicable absent a corresponding provision in the Implementing Regulations. The petitioner did not question these findings of the EBA.

17. Thus the Enlarged Board holds that the petition grounds F and G do not fall under any of the provisions of Article 112a(2)(a) to (e) EPC, and as such are not admissible.

Allowability of the petition

Petition grounds A to C

18. The Enlarged Board notes that Article 112a(2)(c) EPC is specifically limited to a fundamental violation of Article 113 EPC. This article is directed to two distinct issues: the right of a party to comment on decision grounds (Article 113(1) EPC), and the right of the proprietor to determine the text of the patent and the obligation of the EPO to base its decision only on a text which is approved by the proprietor (Article 113(2) EPC). All three grounds A to C appear to invoke the first issue, and only a part-aspect of C relates to the second issue.

Petition grounds A and B - missing reasons on claims as upheld by the Opposition Division

19. The Enlarged Board agrees with the petitioner that it is a corollary of the right to be heard in the sense of Article 113(1) EPC that under certain circumstances the absence of reasons in a decision may constitute a violation of this right.

20. The petition grounds A and B are related to the claims as upheld by the Opposition Division. These claims were pending at the beginning of the oral proceedings, as the Second Auxiliary Request, but were later withdrawn (together with other auxiliary requests), by way of replacing them with a set of auxiliary requests filed at the oral proceedings before the Board.

21. It may be true that the written decision of the Board did not permit either the petitioner or any other party to understand why the decision of the Opposition Division was overturned. However, it was the free decision of the petitioner to replace the pending auxiliary requests with new ones before the final decision of the Board. In this manner the Board no longer had the competence to formally decide on them in the final decision because they were no longer in the proceedings. This follows from the principle of party disposition, according to which it is in the hands of a party to determine the subject-matter on which the EPO should decide. This principle is expressed in Article 113(2) EPC, see e.g. the commentary Singer-Stauder: Europäisches Patentübereinkommen, 7th Edition 2016, page 1074, Randnr. 7 to Article 113 and generally the chapter on Article 113(2) EPC. Thus no fundamental violation of Article 113(1) EPC exists as regards this issue. On the contrary, giving reasons on withdrawn requests might well have given rise to an objection under Article 113(2) EPC.

Petition ground B - missing explanation of the fate of earlier requests

22. There was no need to include in the decision more details of the proceedings than absolutely necessary for understanding the substantive findings of the Board on the requests that were actually in the proceedings when the Chairman announced the decision. Otherwise the course of events was recorded in the minutes, so for any objective observer it is quite clear from the publicly accessible documents in the file why the claims as upheld were no longer mentioned in the decision.

Petition ground C - lack of reasoning on the admission of the main request and the order of treatment of requests

Lack of reasoning on the admission

23. The EBA considers that this ground falls under Article 113(1) EPC, and notes that this provision seemingly does not distinguish between decisions of the EPO which are for or against a party, but rather seems to dictate that a party must be heard in any case. The absence of the reasons is used to imply that the petitioner was not heard on the issue of the admission (even if the minutes do not support this contention). However, only parties adversely affected by a decision may file a petition. The term 'fundamental violation' in Article 112a(2)(c) EPC must also be read in this light. An alleged violation cannot be fundamental, in the sense of 'intolerable' (see CLBA 8th edition, 2016: Chapter IV.F.3.1, 2nd paragraph), if it does not cause an adverse effect. The petitioner did not explain and the EBA itself cannot see what adverse effect might have been caused by not hearing the petitioner on this issue, given that the admission of the petitioner's main request was clearly a positive result for the petitioner.

24. Thus the omission of the reasons for the admission of the main request may not be a practice which is expressly endorsed by the Enlarged Board, it is not seen as a fundamental violation of Article 113(1) EPC under the circumstances of the present case.

Order of treatment of requests

25. As a matter of principle, the Board was free to examine the (pending) claim requests in any order, and therefore it was also free to conduct the discussion on them in any order, without having to give reasons. The principle of party disposition expressed in Article 113(2) EPC does not extend so as to permit a party to dictate how and in which order a deciding body of the EPO may examine the subject-matter before it. In written proceedings this would be impossible for a party to control anyway. The only obligation on the EPO is not to overlook any still pending request before a final decision is taken. The order of examination or discussion is a question of procedural economy, for which mainly the deciding body is responsible. As long as a discussion on the substantive issues of the still pending requests is possible, even if only by reference to discussions on other requests (see R 0006/11 of 4 November 2011, Reasons, point 5.2), such a procedure is unobjectionable and the Board has no particular duty to give reasons why it chose to proceed as it did. Thus the petition ground C is clearly unallowable.

Petition ground D - violation of the right to be heard

26. Concerning the objection D, the Enlarged Board is also unable to see a violation of Article 113(1) EPC. The substantive outcome of the contested decision of the Board, i.e. the revocation of the patent was based on two distinct issues (apart from the admission of the main request, which was not adverse to the petitioner). The first issue was the non-compliance of the main request (claims as granted) with Article 123(2) EPC. The second issue, the non-admission of the newly filed auxiliary requests, was not criticised in the petition.

27. Concerning this latter issue, after receipt of the communication of the EBA the petitioner submitted that the petition also extended to the non-admission of the requests filed during the oral proceedings, but was unable to provide any identifiable basis for it in the petition itself. The EBA therefore disregards this issue, and deals only with the first one, the treatment by the Board of the Article 123(2) EPC objection.

28. The alleged non-compliance with Article 123(2) EPC could not have surprised the petitioner. The objection was already raised in the opposition proceedings. The Opposition Division referred to it in its preliminary opinion dated 21 November 2013 (point 6 on page 5). The decision of the Opposition Division does not discuss the patent as granted, because it was not maintained as a request by the proprietor, Nevertheless, Article 123(2) EPC issues were discussed in the decision in great detail. On appeal before the Board, appellant-opponent 2 raised Article 123(2) EPC objections against the main request in its reply (besides arguing the general inadmissibility of the proprietor-appellant's main request). The communication of the Board referred to these issues and also identified the objected to feature, the "only two bearings". The response to the Board's communication by the respondent opponent 1 takes it up again. The decision of the Board discusses the issue of added subject-matter on several pages (points 2.1-2.4). Thus on the basis of the file, the objection under Article 123(2) EPC and specifically against the "only two bearings" feature was an issue throughout the proceedings.

29. It is not apparent that the petitioner wanted to, or indeed did provide some other and crucial arguments on the question of added subject-matter in the written phase of the proceedings. In all three of its written submissions in the appeal proceedings the petitioner merely referred to the earlier discussions on this issue, apart from arguing generally on the interpretation of the claim features, such as the axial or radial type of the bearing.

30. The Board's decision contains arguments, mostly references to the description, which are stated to come from the proprietor-appellant. It must be presumed that these arguments were first presented in the oral proceedings, and the Board obviously took them into account.

31. The petitioner submitted in its response to the communication of the EBA and further in the oral proceedings before the EBA that it had raised several specific arguments on the issue of added subject-matter, which were not reflected anywhere in the decision. These were the following: (a) conclusions which could be derived from the axial and radial arrangement of the bearings, as explained by the petitioner's representative in the oral proceedings, (b) the wording of dependent claim 6: "the two bearings", with special emphasis on the wording "the", and finally (c) legal arguments generally on the question of original disclosure. The petitioner further stated that the issue of added subject-matter was extensively discussed before the Opposition Division, and the Board had a duty to study the whole file, hence also the earlier submissions of the petitioner.

32. In light of the file and the additional submissions of the petitioner, it is apparent that the petitioner was fully aware of the Board's and the opponents' objections under 123(2) EPC. The petitioner was given a full opportunity to present its case, also including its own arguments mentioned above. Thus there cannot be any violation of Article 113(1) EPC in this regard.

33. The question remains if the Board violated this article by not addressing in detail the specific arguments of the petitioner as set out in point 31 above.

34. These specific arguments are nowhere mentioned in the petition itself. The part of the petition that can be understood to relate to the allegedly overlooked argument(s) of ground D does not go beyond the generally worded argument which is cited in point XI, paragraph (D).

35. This general argument was clearly considered by the Board, in that the Board carefully analysed the 'overall change in the content', namely the "only two bearings" which is not found in the application as filed. Further the Board also examined what the skilled person would understand from the application (e.g. in point 2.3 of the Reasons), and it is also clear from the overall wording of the reasons in the contested decision that the Board was looking for an implicit teaching. It is possible that the petitioner formulated its arguments in different terms than the Board, but it is not required that a Board uses the very same words as a party (R 0013/12 of 14 November 2012, Reasons, point 2.2). Thus the decision of the Board is sufficiently reasoned and there is no violation of Article 113(1) EPC.

36. To the extent that the specific arguments advanced by the petitioner in the oral proceedings merely served to argue its general case, i.e. that the "only two bearings" feature was allowable under Article 123(2) EPC, the Enlarged Board points to the settled case law, according to which it is not necessary to consider each and every argument of the parties in detail (see CLBA 8th edition, 2016: Chapter IV.F.3.13.10,). Thus not addressing these arguments individually in the decision is not necessarily a fundamental violation of the petitioner's right to be heard. Apart from that, the question of the axial and radial bearings is analysed in detail in the decision.

37. If the petitioner's case of a fundamental violation of Article 113 EPC rested on the overlooking of any of these specific arguments, it would have been necessary to explicitly identify the overlooked specific argument or arguments already in the petition. The EBA notes that Rule 109(3) EPC requires that the EBA decides 'on the basis of the petition', i.e. the central arguments of the petitioner must be apparent from the petition. This is also demonstrated by the wording of Article 12(1) RPEBA, which explicitly refers to Rule 109(3) EPC, and permits the Enlarged Board to consider new submissions 'if this is justified for special reasons', i.e. only exceptionally. No such special reason has been advanced and the EBA cannot identify any.

38. The EBA also rejects the argument that the Board should have known and therefore should have considered the petitioner's arguments from the file, as presented before the Opposition Division. The Board had no obligation to peruse the whole file of the first instance proceedings. It is the duty of the parties to raise issues again in the appeal proceedings, to the extent necessary, as stipulated by Articles 12(1) and (2) RPBA: "Appeal proceedings shall be based on [the submissions of the parties filed in the appeal proceedings, which] ... should specify expressly all the facts, arguments and evidence relied on".

39. The EBA finds that petition ground D is clearly unallowable in the sense of Rule 109(2)(a) EPC.

Petition ground H lacking reasons with respect to petition grounds F and G

40. The EBA notes that the arguments forming the petition grounds F and G do not appear anywhere in the written submissions of the appeal proceedings. Neither in the petition, nor in its response to the communication of the EBA did the petitioner state that these arguments belonged to its core arguments on the decisive issue of the "only two bearings". In fact, the petition did not state at all that the petition grounds F and G were actively argued before the Board, but merely implied that these arguments ought to have been taken into account by the Board of its own motion.

41. Although this issue was raised by the EBA in its communication, the petitioner, apart from acknowledging its admissibility under Rule 106 EPC, has said nothing on ground H. In the oral proceedings before the EBA the petitioner merely submitted that the grounds F and G were obviously known to the Board and ought to have been considered under the aspect of general fairness by virtue of Article 125 EPC.

42. On the basis of these submissions the EBA finds that at no time during the appeal proceedings were the petition grounds F and G presented as a specific argument, as regards the allowability of the amendment resulting in the "only two bearings" feature.

43. Even when assuming, for the benefit of the petitioner, that the arguments were explicitly made in the course of the discussion on the "only two bearings" amendment, (presumably in the oral proceedings before the Board), the EBA fails to see how these arguments could have been expected to influence the decision on the issue of the amendment, a purely technical issue which needs to be decided from the point of view of the skilled person and on the basis of the application as filed, and nothing else. It is not apparent that the course of the examination or the existence of an infringement action should have played any role for the Board in deciding the issue under Article 123(2) EPC, contrary to the opinion of the petitioner. To that extent the Board could not have been reasonably expected to address these arguments in any detail. The Board may disregard irrelevant arguments, see e.g. R 0013/12 supra, Reasons, point 2.2.

44. Against this background, and in view of the reasons given above at point 36 in connection with the petition ground D, the EBA finds that the Board did not have to address the arguments underlying the petition grounds F and G. Thus the Board's omission of these arguments in the written decision is not a violation of Article 113(1) EPC. The petition ground H is clearly unallowable.

45. In summary, objections A to D and H are clearly unallowable, and objections E to G are clearly inadmissible, so that the petition as a whole must be rejected under Rule 109(2)(a) EPC.

Order

For these reasons it is decided that:

The petition for review is rejected as partly clearly inadmissible and as partly clearly unallowable.

This decision R 0008/16 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:R000816.20170710. The file wrapper can be found here. Photo from Pixabay under CC0 license.

T 2101/14 – Not admissible if not promptly substantiated

Delta Patents Patent Law -


The applicant filed an appeal against a decision of the Examining Division refusing applicant’s European patent application. With the statements of the grounds of appeal, the applicant forwarded a new set of claims not previously presented during examination. In a preliminary assessment of the claims, the Board expressed its concerns about the introduction of a new unsearched feature.

In order to obviate the Board’s concerns, the applicant presented a further set of new claims. Since this further set of new claims was based on a suggestion for an allowable claim of the Examining Division, the applicant did not consider necessary to file substantiating arguments in support of this new request. Only during oral proceedings the applicant substantiated the patentability of the further set of new claims.

For the Board, an unsubstantiated request becomes effective at the date on which the request is substantiated (T 1732/10) and thus too late in the present case because it would have inevitably required an adjournment of the oral proceedings, which is excluded by Article 13(3) RPBA. Thereby the Board refused to admit the further set of new claims into the proceedings even if the claims were filed well before arrangement of the oral proceedings and dismissed the appeal.



Summary of Facts and Submissions

I. The appeal is against the decision of the Examining Division refusing European patent application No. 02 090 385 on the grounds that the main and auxiliary requests did not comply with Article 123(2) EPC, and that the subject-matter of claim 1 of the main request did not involve an inventive step within the meaning of Article 56 EPC in the light of the combination of documents D1 (EP 1 096 303 A2) and D2 (US 6 140 009).

II. At the oral proceedings held before the Board the appellant requested that the decision under appeal be set aside and that a patent be granted based on claims 1-9 filed with the letter of 6 September 2017.

III. The history of the case before the Board may be summarised as follows:

(a) With the statement of grounds of appeal the appellant forwarded "a new set of claims on which the appeal shall be based". New claim 1 differed from claim 1 of the previous main request at least in the following:


"with a transfer film (30; 50) having a thickness of 50 nm to 100 nm and being in contact with an array substrate."

An indication was given of the basis for this request in the application as originally filed. The correctness of the Examining Division's decision was not challenged, but it was argued that the new feature cited above rendered the claimed subject-matter inventive over D1, D2 and any of sixteen documents cited in the application.

(b) The appellant was summoned to oral proceedings scheduled to take place on 6 October 2017. In a communication pursuant to Article 15(1) RPBA the Board gave its provisional assessment of the case, which was essentially as follows:

The feature considered to confer an inventive step had not been included in any of claims 1-37 as originally filed, nor in any claim subsequently filed during the examination procedure. It was therefore doubtful whether it had ever been searched, either when the European search report was drawn up, or subsequently during examination. It would therefore be impossible to reliably judge the significance of the new feature on the basis of the prior art on file, leaving the Board with the options of either remitting the case to the department of first instance under Article 111(1) EPC for further prosecution, including an additional search, or refusing to admit the amendment using its discretion under Article 12(4) RPBA.

The appellant was invited to provide reasons why the new request had not been submitted in proceedings before the department of first instance. In the absence of any convincing reasons, the Board was likely to refuse to admit it into the appeal proceedings pursuant to Article 12(4) RPBA.

The arguments in the statement of grounds of appeal focused entirely on the amended feature added on appeal. The appellant had not called into question the conclusions of the Examining Division in relation to inventive step. The Board also saw no reason to question these conclusions.

The appellant was reminded of the provisions of Articles 13(1), 13(3) and 15 RPBA. Further written submissions, if any, were to reach the Board at least one month before the date of the oral proceedings.

(c) With a letter dated 6 September 2017 the appellant filed a further set of claims "which shall replace the previous set of claims". Claim 1 reads as follows:

"A method of manufacturing a display device, comprising:

forming an underlying layer (370) over a substrate (300);

forming an insulating layer (380) over the substrate (300) to expose the underlying layer (370); and

forming an organic EL layer (390) on the exposed portion of the underlying layer (370),

wherein the insulating layer (380) has a taper angle on an edge portion thereof,

wherein a thickness of a portion of the insulating layer (380) formed on an edge of the underlying layer (370) is equal to or less than 250 nm, and

characterized in that

the taper angle of the insulating layer (380) is 15 degrees, and


the organic EL layer (390) is formed using a laser transfer technique."

The letter included brief points on Article 123(2) EPC and clarity. Again, no assertion was made that the decision of the Examining Division was in any way wrong. The section entitled "Novelty and Inventive Step" comprised only the following text:


"Applicant assumes that the claims are now acknowledged to be novel and based on an inventive step. Claims and specification should further comply with all other requirements of the EPC."

(d) The original oral proceedings were cancelled due to the public transport system being badly affected by storms. A new date was set for 1 December 2017.

IV. At the oral proceedings, concerning the admissibility of the sole request, the appellant argued essentially as follows.

The new claims were submitted in response to the negative provisional opinion of the Board that the claims filed with the statement of grounds comprised unsearched subject-matter and might not be admissible. The new claims were based on originally-filed claims and therefore had been searched.

It was not considered necessary to file substantiating arguments in support of claim 1, as it corresponded to a suggestion for an allowable claim made by the Examining Division (communication dated 15 October 2010, Reasons, point 5.1).

The claims on file had been submitted in good time one month before the original date for oral proceedings, and approximately three months prior to the revised date for oral proceedings, giving the Board ample time to consider them. A telephone call from the Board might have been expected if it was considered that there was any formal deficiency in this respect. New claims were sometimes admitted even in oral proceedings.

The appellant's analysis concerning inventive step would essentially show that the claimed subject-matter provided the optimum conditions for avoiding the defects which can arise in an edge portion when employing a laser transfer technique on an etched, non-flat substrate. The full analysis in relation to the prior art could be presented in the oral proceedings and would take no more than an hour, which was not excessive and which would not require adjournment.

A failure to allow this request to be fully defended in oral proceedings would amount to a denial of the right to be heard.

Reasons for the Decision

1. Admissibility of the appeal

1.1 Although the correctness of the appealed decision was not challenged in the statement of grounds of appeal, amended claims were filed, and reasons given why the subject-matter of the new claims was considered to involve an inventive step and to satisfy the requirements of Article 123(2) EPC (the grounds on which the application had been refused). The appeal is therefore considered to be sufficiently substantiated to satisfy the requirements of Article 108 EPC, third sentence (see Case Law of the Boards of Appeal, 8th Edition 2016, IV.E.2.6.5(b)).

1.2 The fact that, after the four month time limit set out in Article 108 EPC, the appellant withdrew the request to which the reasoning given in the statement of grounds applied has no bearing on the assessment of the admissibility of the appeal (see Case Law of the Boards of Appeal, 8th Edition 2016, IV.E.2.6.3)

1.3 The appeal is admissible.

2. Admissibility of the sole request

2.1 One of the grounds for refusal was a failure to meet the requirements of Articles 52(1) EPC and 56 EPC 1973, a conclusion which the Board provisionally endorsed in the communication pursuant to Article 15(1) RPBA. At no point in the written procedure did the appellant provide a single argument why the subject-matter of claim 1 of the present request is considered to involve an inventive step. The decision of the Examining Division was never challenged, nor was any written argument provided explaining why the amendments to claim 1 rendered the subject-matter inventive.

2.2 Furthermore, it has never been argued by the appellant that it is self-evident that claim 1 involves an inventive step. On the contrary, as explained below, the appellant wished to make submissions on this point which it was estimated would take no more than about an hour.

2.3 Hence, as far as the written procedure is concerned, the Board can see nothing which would justify any deviation from the position of the Boards that unsubstantiated requests (unless it was obvious how they overcame the outstanding objections) should not be admitted into the proceedings (see Case Law of the Boards of Appeal, 8th Edition 2016, IV.E.4.2.4).

2.4 At the oral proceedings the appellant asked to be allowed to present, for the first time, the case on inventive step in relation to its present request.

The question is therefore whether the conditions for admissibility of the request may be met by supplying the missing substantiation during the oral proceedings for the first time. The arguments of the appellant in this regard, and corresponding opinions of the Board, are examined in the following sections.

3. The argument that the request was based on a suggestion of the Examining Division

3.1 The appellant argued that the new claims did not need to be accompanied by reasoning in support of non-obviousness, since claim 1 corresponded to a suggestion for an allowable claim made by the Examining Division under point 5.1 of the Reasons in the communication dated 15 October 2010 (a similar suggestion was made under point 5.1 of the Reasons in the communication dated 23 October 2013).

3.2 Firstly, the Board notes that this argument was itself presented for the first time in the oral proceedings, with no reason given why this point could not have been made earlier. Secondly, the Board finds a lack of consistency in the appellant's position in this regard. It is a fact that the appellant's representative had prepared arguments that the subject-matter of claim 1 involved an inventive step, and wished to present these arguments at oral proceedings. The Board does not see how this is consistent with a belief that no arguments are necessary in the case of a claim suggested by the Examining Division.

3.3 The main point, however, is that any suggestion made by the Examining Division in a communication is merely an attempt to expedite the proceedings. It is not binding on the Boards of Appeal or even on the Examining Division itself. Any doubt on this point was dispelled by the Enlarged Board of Appeal in G 10/93 (OJ EPO 1995; 172; Reasons, point 7).

The fact that the subject-matter of a request filed in appeal proceedings corresponds to subject-matter which had been suggested by the Examining Division does not relieve the appellant of the responsibility to substantiate the request, nor does it justify the filing of such substantiation for the first time in oral proceedings.

4. The argument that the request had been submitted in good time

4.1 The current claims were filed one month before the original date for oral proceedings, and approximately three months prior to the revised date for oral proceedings. The Board accepts that this allowed ample time to read the new claims, and to consider the basis in the application as filed for these claims suggested by the appellant.

However, the Board did not have the opportunity during this period to consider the case in relation to inventive step, since no case had been made out for the Board to consider.

4.2 According to Article 13(3) RPBA:

"Amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues which the Board ... cannot reasonably be expected to deal with without adjournment of the oral proceedings."

4.3 Where an appellant files new claims after oral proceedings have been arranged - even if within a period set by the Board - and chooses not to file any arguments on inventive step prior to the oral proceedings, the relevant question under Article 13(3) RPBA in determining whether these claims may be admitted, is whether the Board can reasonably be expected to deal with the appellant's case on inventive step being presented for the first time in oral proceedings.

In fact, unless the reasons why the new claims overcome the outstanding objections are self-evident (which is not the case here - see point 2.2, above), the effective date of filing of the claims is the date on which the substantiation is first provided (or offered in oral proceedings). This was stated in T 1732/10 as follows:

"For the Board, unsubstantiated requests normally become effective only at the date on which they are substantiated. Their filing in and of itself plays therefore no role, whether one, two (as in the present case) or three months before the oral proceedings" (T 1732/10, Reasons, point 1.5, fourth paragraph; see also "Catchword").

A similar point was made in T 1134/11 (see Reasons, point 10.6).

4.4 The Board concurs with these decisions, and hence the fact that the claims themselves were filed, without substantiation, three months prior to the oral proceedings does not guarantee that they will be admitted.

5. The argument that the Board could deal with the new submissions in the oral proceedings

5.1 The appellant's representative asked to be allowed to present the case on inventive step in the oral proceedings, which, it was estimated, would take no more than about an hour. The Board could then deliberate and take a decision, with no adjournment being required.

5.2 The Board accepts that new submissions are not necessarily inadmissible for the sole reason that a party seeks to introduce them for the first time during oral proceedings. In particular, in the case of arguments, one of the purposes of oral proceedings is to allow the parties to develop, elaborate and add to their previous reasoning. Oral proceedings are not, however, intended to provide a means for an appellant to build the entire case on inventive step from scratch, especially where no good reason is given why these arguments were not previously submitted in writing.

5.3 In ex parte proceedings, before ordering the grant of a patent it is the responsibility of the Board to ensure that the conditions for patentability exist. This involves not only being informed of and understanding the arguments of the appellant, but also subjecting these arguments to a critical analysis.

It is for this reason that the Board requested that any new submissions should be made in writing well before the date of the oral proceedings. In this way a Board of Appeal not only has the opportunity to familiarise itself with the arguments and arrive at an initial assessment well before the date of the oral proceedings, it also has the opportunity for further reflection in the period up until the date of oral proceedings. This further period of review and study may well throw up doubts about the Board's initial assessment, or reveal issues which were not initially apparent and which need to be clarified at oral proceedings.

The appellant's request to be allowed to present the arguments on inventive step in toto in the oral proceedings, effectively invites the Board to short-circuit this procedure, and to deliver a final decision based on an initial assessment of an argument which it has just heard for the first time in the oral proceedings, thereby eliminating the possibility of further reflection and study (without any time constraint) which the filing of arguments in the written procedure provides. The Board does not see why it should reasonably be expected to accede to this request in a case where no valid reason has been given why these arguments were not filed earlier.

Where arguments are brought for the first time in oral proceedings, allowing a period of reflection comparable to that referred to above would inevitably require adjournment of the oral proceedings, which is excluded by Article 13(3) RPBA. For this reason, the Board informed the appellant that it would not hear the arguments on inventive step which the appellant sought to make at oral proceedings, and that the set of claims for which these arguments would have represented the sole substantiation on inventive step was not admitted into the proceedings.


5.4 The sole request of the appellant is that the decision under appeal be set aside and that a patent be granted based on the set of claims filed with the letter of 6 September 2017. As this set of claims is not admitted into the proceedings, this request cannot be allowed, and the appeal must be dismissed.

6. The jurisprudence of the Boards

6.1 The above approach is in line with the jurisprudence of the Boards of Appeal.

6.2 In T 253/06, following a decision rejecting an opposition, the Board sent a communication in preparation for oral proceedings which drew attention inter alia to the requirements of Article 13 RPBA and set a time limit for filing new submissions. The patent proprietor filed new auxiliary requests shortly before the expiry of this time limit, but gave no indication why the amendments were made or how they were to overcome the Board's objection of lack of inventive step. Apart from those requests which had already been part of the proceedings and had merely been re-filed, the Board decided in oral proceedings that these new requests were unsubstantiated and were not admitted into the proceedings (Reasons, point 3).

The Board concluded that requests filed after the appointment of oral proceedings can be regarded as inadmissible in accordance with Article 13(3) RPBA, even if filed within a prescribed time limit, if they are not substantiated, i.e. if they were not accompanied by reasons explaining why the amendments had been made and how they were intended to overcome the objections raised in the course of the proceedings (Catchword and Reasons, point 3).

7. The allegation of a denial of the right to be heard

7.1 According to Article 113(1) EPC ("Right to be heard and basis of decisions"):

"The decisions of the European Patent Office may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments."

7.2 The decision of the Board in this case is based on the non-admittance of the sole request (comprising claims 1-9 filed with the letter of 6 September 2017) into the proceedings pursuant to Article 13(3) EPC.

The admissibility of these claims and the question whether the substantiating arguments could be presented during the oral proceedings were fully discussed, and the views of the appellant, as summarised under point IV, above, were taken into account in reaching the present decision.

The requirements of Article 113(1) EPC were therefore met, and the arguments of the appellant set out below do not persuade the Board otherwise.

7.3 The appellant essentially argued that the right to be heard was not being respected as it was not allowed to present the arguments on inventive step during the oral proceedings.

7.4 The appellant's argument that there was a denial of the right to defend the claims on their substantive merits must clearly fail. Article 113(1) EPC guarantees a right to be heard on the grounds and evidence on which a decision is based. The present decision is not based on the ground of lack of inventive step, and so Article 113(1) EPC confers no right to be heard on this matter per se.

7.5 In the opinion of the Board, the only conceivable way in which Article 113(1) EPC could be invoked in the present case, would be to allege that the arguments on inventive step have a bearing on the question of the admissibility of the claims, and should be heard for this reason. Although the appellant did not raise this argument directly, the Board is nevertheless prepared to consider it.

Cases may conceivably arise in which a Board decides to hear new substantive arguments in oral proceedings in relation to the question of the admissibility of the request to which they relate. For example, if an appellant wished to demonstrate that the arguments substantiating the request do not deviate significantly from arguments previously filed in the written procedure, and if the Board considered this to be relevant, it could use its discretion to allow the new substantive arguments to be heard. In the present case, however, no arguments having any relevance to the question of inventive step of the present claims were filed in the written procedure, and so this reason for hearing the substantive arguments does not apply. Nor can the Board see any other reason (and no reason has been provided by the appellant) why, in the present case, hearing the appellant's arguments on inventive step in the oral proceedings would have had any bearing on the admissibility of the request.

Order

For these reasons it is decided that:

The appeal is dismissed.

This decision T 2101/14 (pdf) has European Case Law Identifier:  ECLI:EP:BA:2017:T210114.20171201. The file wrapper can be found here. Photo "Refused" by Helen Alfvegren obtained via Flickr under CC BY 2.0 license (no changes made).


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