Zusammenfassung von EPC2000 R 109(2)(a) für die Entscheidung R0025/22 vom 08.03.2024

In the decision under review in R 25/22 the board had confirmed the revocation of the patent because it had found that the skilled person had had insufficient information to establish the meaning of the "shrinkage ratio" feature. The petition for review was based on the issue that the Reasons given by the board in point 6.2.3 had not been put to the parties at an earlier point in time, and that the petitioner (patent proprietor) had thus not been able to comment on them. Specifically, the board had given a definition of the shrinkage ratio that had been wholly unexpected by the proprietor and in fact by all parties, namely that the shrinkage ratio was a parameter of a plurality of yarns. The petitioner argued that this definition must have been decisive for the issue of sufficiency. The Enlarged Board of Appeal (EBA) accepted that the issue of the plurality of yarns vs. a single yarn had not appeared anywhere in the written submissions or in the communications from the board, at least not in the form as discussed in the disputed point of the board's reasons. However, the EBA held that even if the board might have made findings in the written decision that had not been previously raised, the role such findings played in the final decision, if any, must be examined. In this regard, the EBA pointed to the settled case law on petitions, according to which a board of appeal is not required to provide the parties in advance with all foreseeable arguments in favour of or against a request. Furthermore, a violation of Art. 113 EPC can only be considered fundamental within the meaning of Art. 112a(2)(c) EPC if there is a causal link between the alleged violation and the final decision. The EBA found that in order to establish whether the disputed finding by the board had been decisive for its final finding on sufficiency, their decision as a whole must be examined. The EBA held that, in the rather specific circumstances of the present case, the new "plurality of yarns" interpretation was not considered to be decisive for the reasons set out in detail, and was thus not causal to the board's final decision either. The petitioner argued that as a matter of principle, the EBA was not competent to assess the merits of a party's arguments, in particular whether they would be successful or not. The EBA understood this argument to mean that, a fortiori, the EBA also could not judge whether or not an argument could have been decisive. The EBA did not dispute that it was not competent to judge the correctness of a decision, however this did not mean that the EBA was in principle prevented from analysing and understanding the board's reasons. In order to determine whether an ignored argument by a party or a surprising new argument by a board had indeed been causal, the EBA would inevitably have to go into the substance of the case and at least understand the parties' arguments and the board's reasons. The EBA noted that its composition under Art. 22(2), second sentence, and R. 109(2) EPC ensured that the necessary technical expertise was present. Accordingly, the EBA held that it had the power to examine decisions of the technical boards of appeal in petition proceedings for the purpose of determining the decisive character of any reasons given by the board, irrespective of whether they were of a legal or technical nature. Furthermore, the EBA interpreted the condition "clearly unallowable" of R. 109(2)(a) EPC. It held that the correct criterion for determining whether the petition was "clearly" unallowable within the meaning of R. 109(2)(a) EPC was not just the depth of the analysis required to understand the case from a legal or technical point of view. Instead, what also mattered was the degree of conviction of the individual members of the EBA as to whether the alleged procedural defect was indeed a fundamental procedural defect within the meaning of Art. 112a(2)(a) to (d) EPC, once the relevant facts of the case had been identified, possibly only after an exhaustive and detailed examination of all the legally and technically relevant facts. Having reviewed the technical facts of the case and the applicable legal framework, and having considered the exclusively legal arguments by the petitioner, the EBA remained fully convinced that the board's "plurality of yarns" interpretation mentioned in point 6.2.3 of the Reasons had not been decisive for the board's finding of insufficiency. Accordingly, the petition was considered clearly unallowable.