(i) Role of the boards of appeal
Each party is free to present its case as it will, whereas the board is obliged to rule on the basis of the parties' submissions. In inter partes proceedings, a board should not help one party one-sidedly by giving it relevant information in advance, either in the oral proceedings (R 11/08) or in a communication (R 3/09). See R 12/09, R 15/09 and R 15/10. In R 14/10 the Enlarged Board agreed that in cases where a party's request is considered unclear, it is the duty of the deciding body to ask for clarification before deliberation. However, if the requests as read out before declaring the debate does not correspond to the petitioner's intention, it is his duty to intervene at that point.
A party seeking a decision in its favour must take an active part in the proceedings and on its own initiative submit in due time whatever will support its position (R 2/08). Professional representatives are bound as such to decide independently – i.e. without help from a board – how they will conduct their cases (see T 506/91, cited with approval in R 11/08). (This has also since been confirmed in R 18/09 and R 21/09.) Nor does a board have an obligation to warn a party of deficiencies within the party's own responsibility, such as knowledge of the case law – see R 4/09 and R 17/09.
Similarly, there is no legal basis for an obligation on the board of appeal to hear the petitioner on substantive issues before deciding the issue of admissibility of a proposed auxiliary request if, given the particular circumstances of the case, these issues are found not to correspond to the relevant decisive criterion (R 16/09). It is also irrelevant for the purposes of Art. 113(1) EPC that the petitioner only became aware of the purported relevance of a particular document when reading the reasons for the decision (R 14/09).
In the proceedings leading to the decision against which the petition in R 14/10 was lodged, the Chairman of the board had read out the opponent's request "that the decision under appeal be set aside and that the European patent [...] be revoked". According to the Enlarged Board, this indicated beyond any reasonable doubt that, after the closure of the debate, the board intended to deliberate on the patentability of the claims at issue as discussed before and that, depending on the outcome of said deliberation, it could pronounce the revocation of the patent as a whole. This could not be considered as a violation of Art. 113 EPC .
(ii) Substantive reasons
In R 9/08 the petitioner based its case on the allegation that the board had taken into account the whole disclosure of a document, only part of which had been in the proceedings and on which the petitioner had therefore not been able to comment. It was alleged that this document had been decisive for the board's finding. This argument had to fail, as it would require the Enlarged Board to examine whether or not the substantive conclusions arrived at by the board were justified. There was no indication in the reasons for the decision that in order to arrive at its conclusions the board had had recourse to passages of the document other than the one reproduced and expressly referred to by the board of appeal. The Enlarged Board found the petition clearly unallowable.
In R 3/09, the petitioner was not claiming that the board had taken its decision on the basis of a text not agreed by the appellant – which would have been a clear direct breach of Art. 113(2) EPC – but that it had given it a "distorted" meaning". The Enlarged Board stated that discrepancies between a board's provisional opinion as expressed in a communication preparing oral proceedings and its analysis in its final decision did not constitute a fundamental procedural defect in the absence of other verifiable circumstances showing that it was impossible for the parties to comment on the points mentioned as requiring discussion. The allegation of "distortion" was in fact a criticism that the decision's reasoning was unsound. But that would mean scrutinising the decision's application of substantive law – which went beyond the Enlarged Board's remit in review proceedings. See also R 8/09, R 13/09 and R 23/10. Similarly, where the substance of the petitioner's complaint is not that it was not heard on an issue, but that the board, having heard the petitioner, decided contrary to its requests, this does not constitute a violation of the right to be heard (R 9/10, R 15/10 and R 4/11).
Remarks made by the board chairman shortly before delivering the decision, which are often simply for information purposes, are not grounds for the decision. They are not made to that end, are generally not recorded in the official minutes and do not usually result from any thorough analysis. What matters are the written reasons for dismissing the appeal. It is also important to ascertain whether the appellant had an opportunity to comment on those reasons and/or whether the reasons take due account of the arguments invoked by the appellant during the proceedings (R 4/12).
(iii) Presenting comments
In R 23/10 the Enlarged Board of Appeal agreed that the right to be heard under Art. 113(1) EPC required that those involved be given an opportunity not only to present comments (on the facts and considerations pertinent to the decision) but also to have those comments considered, that is reviewed with respect to their relevance for the decision in the matter (see also R 19/10 and R 13/12). This view was not in conflict with the Enlarged Board's jurisprudence, according to which, if the party concerned was aware of the arguments put forward by the other party, given an opportunity to answer them and had not contended that the board of appeal had refused to hear it, that was sufficient for the purposes of Art. 113(1) EPC (see especially R 18/09): this finding referred to cases that involved checking if the reason why one of the parties had not commented (on facts and considerations pertinent to the decision) was because they had been prevented from doing so by objective circumstances (as established in R 7/09) or how the board of appeal had conducted the proceedings. See also R 22/10.
The obligation on the boards to consider the parties' argumentation is shaped by the circumstances of each case. This means that the boards have an obligation to discuss in their decisions issues and arguments to the extent that they are relevant for the decision and may disregard irrelevant arguments. The boards are not obliged to use specific words or the same wording as the parties and it must be accepted that refutation of arguments may be implicitly inferred from the particular reasoning held by the boards (R 13/12, citing R 21/10).
(iv) Reasons of the board of appeal
There is no right whereby a board must inform the parties in detail before taking its decision about all the foreseeable grounds set out in the reasons for its decision (R 1/08, R 3/09, R 8/09, R 12/09, R 13/09, R 15/09, R 18/09, R 15/10, R 6/11, R 16/11 and R 19/11). Disregarding cases where a board explicitly refuses to hear a party on a particular issue, it is generally sufficient for the granting of the right to be heard in accordance with Art. 113(1) EPC 1973 if the grounds given in the written decision correspond to an argument put forward by any of the parties to the proceedings, so that the petitioner was aware of it and hence could not be surprised by corresponding grounds (R 2/08, R 4/08). See also R 22/10.
The petitioner in R 6/11 alleged that the board's written decision was not reasoned with respect to the auxiliary requests. The petitioner argued that, as R. 111 EPC requires that the decisions of the EPO which are open to appeal should be reasoned, this provision should by analogy apply to decisions of the boards of appeal because of the possibility of review.
The Enlarged Board of Appeal disagreed. It was completely and unambiguously clear from R. 104 EPC that the Implementing Regulations only added two further grounds for petitions for review to those in Art. 112a(2) EPC and that the list of possible grounds contained in Art. 112a(2) and R. 104 EPC was exhaustive. This had been made abundantly clear in the Enlarged Board's jurisprudence (see R 1/08; R 10/09; R 16/09; R 18/09; R 20/10 and R 1/11). The grounds enumerated in the legislation being exhaustive, there was no scope for creating an additional ground by analogy with R. 111 EPC as the petitioner sought to do.
(v) Admissibility of late-filed documents
Where the submission of a new document in support of an alleged lack of novelty only at the appeal stage clearly constituted a fresh ground for opposition, the appeal board's decision not to admit the document was fully in keeping with appeal board case law on the handling of fresh grounds for opposition at the appeal stage. The petition was unallowable (R 2/08).
In R 11/11 new requests, which had been filed in time with the statement of the grounds of appeal, had not been admitted by the board of appeal. The petitioner argued that it could not have presented the requests in the first instance proceedings since it was taken by surprise and did not know the reasons for the opposition division's view.
The Enlarged Board found that the petitioner's right to be heard could not have been infringed in this respect since it was not disputed that the issue of admissibility of the requests was debated during the oral proceedings held before the board of appeal. Even if the board had been wrong to consider that the requests could have been presented in the first instance proceedings, this could not form a basis of a complaint that the petitioner's right to be heard was not respected.
(vi) Decisions of departments of first instance
As R. 106 EPC implies, only procedural defects actually attributable to a board of appeal can be reviewed by the Enlarged Board of Appeal under Art. 112a EPC. The unambiguous wording of this rule excludes the possibility of reviewing under Art. 112a EPC procedural defects which have already arisen during the proceedings before the examination or opposition division.
Decisions of the department of first instance cannot be reviewed anew even where it is alleged that a universally recognised fundamental rule of procedure, such as the right to be heard under Art. 113(1) EPC, has been infringed. Despite that right's special importance for due process in accordance with the rule of law, the Enlarged Board cannot act as yet another instance in all cases in which the granting authority is alleged to have infringed it. The Enlarged Board is not responsible for safeguarding the parties' procedural rights at all stages of the procedure, including that before the granting authority. Indeed, that is precluded by the clear wording of Art. 112a(1) EPC, according to which a petition for review may only be filed where a decision of a board of appeal has had an adverse effect. The task of reviewing of whether the department of first instance granted the parties an opportunity to be heard is a task allotted to the ordinary boards of appeal as a judicial instance (R 8/11). See also R 20/10.
(vii) Language of the proceedings
In R 3/08 the petitioner alleged that his right to be heard had been breached in that an employee of his had not been allowed to make submissions in English at the oral proceedings (although the language of proceedings was English, the oral proceedings were conducted in German). The Enlarged Board disagreed. The employee had to be considered an accompanying person within the meaning of G 4/95 (OJ 1996, 412). According to this decision, oral submissions could not be made as of right, but only with the permission of and at the discretion of the EPO. Moreover, the petitioner's representative had himself cancelled his own request for translation into German, albeit before it was known the employee would be attending, by which time the period of time for requesting translation had already lapsed. The employee's submissions could have been presented by the professional representative in German. Thus the board's decision neither constituted a misuse of its discretion nor unduly restricted the petitioner's right to be heard.
(viii) Party's requests
In R 10/08, the petitioner alleged that the chairman of the board had infringed Art. 15(5) RPBA by not stating the final requests of the parties before declaring the debate closed. This had prevented the petitioner from filing a further request, as he believed that the debate could not be closed prior to the chairman stating the final requests of the parties. The Enlarged Board pointed out that an infringement of Art. 15(5) RPBA could only become relevant in so far as it involved a fundamental violation of Art. 113 EPC or a fundamental procedural defect under Art. 112a(2)(d) EPC in combination with R. 104(b) EPC. The Enlarged Board found that the petitioner had had sufficient opportunity to comment on the grounds and evidence on which the board's decision was based, and that the board's decision was based on the debate and referred to the debated requests. As far as a possible fundamental violation of Art. 113(2) EPC was concerned, reference was made to G 7/93 (OJ 1994, 775), according to which this provision did not give any right to an applicant in the sense that the EPO was bound to consider a request for amendment put forward by the applicant. The effect of the provision was merely to forbid the EPO from considering and deciding upon any text of an application other than that submitted to it or agreed by the applicant or proprietor. There being no evidence that the petitioner indicated any wish to file further requests, the board decided upon a text submitted to it by the proprietor. The petition was rejected as clearly unallowable.
In R 6/11 the Enlarged Board made it clear that a party has no absolute right under Art. 113(1) EPC to be heard separately on each and every one of its auxiliary requests, either at all or in its chosen order of preference. The right provided by that Article is to comment on grounds for a decision and not to comment on individual requests or to repeat comments on grounds which apply to two or more requests. Thus, the requirement of that Article that the parties have an opportunity to comment on the grounds for a decision is, by definition, satisfied if those grounds have been the grounds for a decision on the main request (or another auxiliary request) and the remaining requests are not allowed on the same grounds.
The Enlarged Board went on to say that the impression of a party (or it's representative) that the board would decide in its favour is also immaterial to the fulfilment of requirements pursuant to Art. 113(1) EPC. The Enlarged Board's jurisprudence makes it clear that the right to be heard is satisfied if the party is aware of, and thus has had the possibility to comment on, arguments of the other party on which the decision is based (see also R 2/08 and R 4/08).
It is not for the boards to ensure, of their own motion, that all points raised at some point in the proceedings are discussed at the oral proceedings. Rather, it is for the parties to address any point they consider relevant and fear may be overlooked and to insist, if necessary by way of a formal request, that it be discussed. If a board then denies the party an opportunity to put forward its arguments, this may constitute a ground for asserting a breach of the right to be heard under Art. 113(1) EPC (R 17/11).
(ix) Comments by examiner during oral proceedings before the board of appeal
The petitioner in R 4/12 asserted that it had been surprised to learn, during the break in the oral proceedings, from the only third party attending them, who had presented himself as the examiner who had taken the decision to refuse the application, that its appeal was going to be dismissed, before the registrar had even announced resumption of the proceedings. The Enlarged Board, however, considered that this assertion had no bearing on the petitioner's submissions with regard to infringement of its right to be heard under Art. 113(1) EPC.
(x) Burden of proof
The petitioner bears the burden of the proof of its allegations (R 4/09). In this case, the petitioner had alleged that it had been misled, the board having adopted in its written reasoning a completely contrary approach to the indications it had given in the oral proceedings, thus depriving the petitioner of its right to comment on the grounds that directly caused the revocation of the patent. However, according to the Enlarged Board, the petition appeared to concern the principle of good faith and the protection of legitimate expectations rather than the right to be heard. This principle did not impose on a board an obligation to warn a party of deficiencies within the party's own responsibility, such as knowledge of the case law.
(xi) Causal link
The petitioner must establish a causal link between any violation of the right to be heard (should the violation be substantiated) and the final decision (R 1/08, R 11/08, R 6/09, R 11/09 and R 19/09). In R 19/09 the Enlarged Board went on to say that such a link could only be assumed to exist if (as in the case at issue) the board had refused to acknowledge an unexpected effect solely based on the argument on which the petitioner had not been heard. If the board had refused to acknowledge the unexpected effect also for other reasons on which the petitioner had been heard, it could not be argued that the procedural deficiency causally determined the final decision. This case law was also followed in R 21/11 where a causal link was established and the petition allowed (see point 9.2.10 b) below). Referring to the necessary causal link, the Enlarged Board pointed out that this meant that it could not be ruled out that a different decision would have been reached if the party had been heard on the point on which it alleged its right to be heard had been infringed.
The Enlarged Board pointed out in R 4/12 that Art. 113(1) EPC could not be regarded as infringed simply because the decision dealt with arguments which, although liable to work in the appellant's favour, had possibly never been part of the grounds invoked. In other words, there was no causal link between the alleged procedural defect and the decision.
(xii) Irrelevant arguments raised
Arguments with respect to the correct understanding of the technical issues of the petitioner's invention and its possible misunderstanding by the board of appeal in the contested decision are not relevant in petition proceedings under Art. 112a EPC (R 3/12).