R 0015/11 (Fundamental violation of Article 113 EPC/IVIS TECHNOLOGIES) 13-05-2013

Admissibility of the petition for review

1. In accordance with Article 112a(4) EPC, the petition was filed and the prescribed fee was paid within two months of notification of the decision under review. The requirements of Rule 107 EPC in respect of the contents of the petition have been fulfilled.

2. As regards the obligation to raise objections under Rule 106 EPC the Enlarged Board of Appeal makes the following observations:

2.1 As set out more in detail below (point 4, "Allowability") there is nothing in the file of the appeal proceedings in question which supports the conclusion that the petitioner was or should have been aware during the appeal proceedings that compliance of the sole auxiliary request with Article 84 EPC was at issue.

2.2 According to the petitioner (see point III, above), the chairman, just before announcing the decision on the appeal, made a negative statement as to the compliance of the auxiliary request with Article 84 EPC, but refused to give the petitioner's representative the floor when he immediately tried to intervene and to address this requirement (see point III(iii), above for details) which, according to the petitioner, had never been discussed before or during the oral proceedings.

2.3 In the circumstances of the present case it is immaterial for the purposes of Rule 106 EPC whether or not these submissions give a true account of the conduct of the final stage of the oral proceedings before the Board of Appeal. If they do, the total and final refusal to hear the petitioner effectively hindered the petitioner from exercising its right to be heard and, at the same time, prevented its representative from raising a relevant objection under Rule 106 EPC (either directly or in reaction to the refusal to comment on the new objection). If for whatever reason the petitioner's submissions regarding the final stage of the oral proceedings in question were not taken into account by the Enlarged Board of Appeal, then there would be no indication at all that the petitioner could possibly have been aware before notification of the decision under review that it would be based, within the meaning of Article 113(1) EPC, on the lack of clarity in respect of the auxiliary request.

3. Thus, on either view, the relevant objection could not be raised by the petitioner during the appeal proceedings. It follows that Rule 106 EPC is satisfied.

Allowability

4. There is no explicit or implicit indication in the file of the appeal procedure from which it can be derived that in respect of the auxiliary request a possible lack of clarity (Article 84 EPC) was at any time discussed with the petitioner or that at least an objection was raised in this respect.

4.1 The petitioner is correct in saying that the statement in the communication accompanying the summons concerning a potential discussion of inter alia Article 84 EPC (point III(i), above) did not amount to a specific objection under that provision regarding the auxiliary request. It expressed, at best, a conditional and quite general intention of the Board of Appeal when drafting the communication. It cannot help establish whether or not the petitioner was then actually given the opportunity to comment on that requirement within the meaning of Article 113(1) EPC.

4.2 The reasoning in point 3, last paragraph of the decision under review (point I, above) is equally inconclusive in this respect, also insofar as it refers to explanations given by the petitioner during the oral proceedings, both orally and in the form of additional written notes. There is nothing in this paragraph or elsewhere in the Reasons including, in particular, the Facts and Submissions, which indicate or imply that at any time during the oral proceedings the petitioner was aware or could have been aware that compliance with Article 84 EPC was at issue. The reference in point 3, second paragraph to the "crucial paragraphs of the description referred to by the [petitioner]" (see point V, above) are in this respect too vague in the face of the petitioner's assertion about this (see point VI, above). The written notes referred to in the decision are not further identified by the Board and the notes produced by the petitioner bear out what is said in the petition (see point VII) above, i.e., they do not concern the crucial passage in the claim found to be unclear.

4.3 Neither do the petitioner's submissions, in particular its account of the final stage of the oral proceedings before the Board of Appeal (point III(iii), above) suggest in any way that the right to be heard was granted in respect of the critical ground for the decision in question - on the contrary, see point 2.3 above.

5. The Enlarged Board does not have the power or ability to investigate further whether or not there might be other facts or indications which would suggest that at any time the petitioner was indeed aware or could have been aware that the Board of Appeal had doubts as to the compliance with Article 84 EPC, an awareness which would have been the minimum prerequisite for an opportunity to comment on that ground within the meaning of Article 113(1) EPC. In the absence of any such indication it is clearly not for the party which alleges a breach of its right under that provision to prove the negative (negativa non sunt probanda). Nor can the Enlarged Board, in the absence of any such indications, re-construct the detailed course of the entire appeal proceedings, in particular of the oral proceedings, in a case where the decision of the Board of Appeal has been challenged under Article 112a(2)(c) EPC. Any relevant document on file, in particular the parties' written submissions, any communication under Article 15(1) RPBA, the minutes of the oral proceedings or the facts and submissions and/or the reasons for the decision pursuant to Article 111 EPC may serve the purpose of establishing what took place, it being the usual practice of the Boards of Appeal to include the relevant information in the facts and submissions and/or the reasons for the decision (rather than in the minutes of the oral proceedings). It is for the Board of Appeal to draft its own texts in a way that enables the reader, taking into account all documents on file, to conclude that the right to be heard within the meaning of Article 113(1) EPC was respected with regard to the grounds on which the decision of the Board of Appeal is based.

6. No such conclusion regarding non-compliance of the auxiliary request with Article 84 EPC, on which ground the appeal was eventually dismissed, is present in the reasons for the decision under review, in particular not in point 3, last paragraph (point 4.2, above). Had the clarity issue been raised earlier and in a manner enabling the petitioner to comment on it, one would expect that this would be indicated by the Board of Appeal or otherwise reflected in the written reasons for the decision under review, e.g. by dealing with the party's reaction - normally counter-arguments or amended requests, or both - in the Summary of the facts and submissions and/or in the Reasons for the decision.

7. Under these circumstances the Enlarged Board of Appeal is not in a position to establish that the petitioner's right to be heard has been respected. So it has to be assumed that a violation of the petitioner's rights under Article 113(1) EPC occurred which qualifies as fundamental within the meaning of Article 112a(2)(c) EPC because it concerned the ground on which the appeal was eventually dismissed by the decision under review.

Request for replacement of the members of the Board of Appeal under Rule 108(3) EPC

8. What the petitioner's argumentation in support of that request (point XI, above) boils down to is, in effect, that the replacement of all members of the Board of Appeal should be an automatic ("routine") measure whenever the violation of the petitioner's rights which led to the setting aside of the decision of the Board of Appeal was a mistake of the Board of Appeal itself (and not, as e.g. in case R 21/11, due to circumstances outside the Board's control), such a mistake bringing a suspicion of partiality upon each member of the responsible board.

9. However, such a narrow understanding of the Enlarged Board's discretion to replace or not to replace Board members cannot be derived from the wording of Rule 108(3), second sentence, EPC, nor does it properly reflect its purpose.

Rule 108(3), second sentence, EPC stipulates quite generally that the Enlarged Board may order the replacement of board members who participated in the decision set aside. Hence, even if the decision of the Board was flawed by a fundamental procedural deficiency within the meaning of Article 112a EPC, the replacement of board members still lies in the discretion of the Enlarged Board. This means that replacement does not ensue automatically from the fact of a deficiency within the meaning of Article 112a EPC having occurred. On the contrary, the rule is that the proceedings are re-opened before the Board of Appeal responsible under the business distribution scheme (see Revision of the European Patent convention (EPC 2000), Synoptic presentation EPC 1973/2000 - Part II: The Implementing Regulations, OJ EPO Special edition 5/2007, 166). This serves the interest of procedural economy, since the board members who are familiar with the case will normally most efficiently deal with the case again.

More importantly, however, the principle relied on in decision R 21/11 of 15 June 2012, namely that the replacement of members of the Board of Appeal should not be ordered without good reason, is not merely a matter of procedural economy. As the business distribution scheme of any court, the BDSBA (see Supplement to OJ EPO 1/2013, 12 for the current version) and the adherence to it is an important element of an independent, reliable and efficient judicial system which meets the standards set by, inter alia, Article 6 ECHR. Any change of a Board's composition without good reason would be contrary to the evident purpose of the BDSBA - and, thus, also detrimental precisely to "the public's confidence in the judicial character of appeal proceedings" which the petitioner referred to - and must, therefore, remain restricted to situations where for objective or clearly established subjective reasons an individual member can or should no longer participate in the case. This is not only reflected in the above cited wording of Rule 108(3), second sentence, EPC: "The Enlarged Board of Appeal may order ...". but also in the wording "... that members [not: the members] ... shall be replaced" in Rule 108(3) EPC and in Article 4(1) of the BDSBA: "If a member designated ...".

10. Just as a decision under Article 24(4) EPC, an order under Rule 108(3) EPC causes a change of the composition of the Board of Appeal as originally determined pursuant to Articles 2 and 3 BDSBA. In decision G 1/05, OJ EPO 2007, 362, point 8 of the Reasons, the Enlarged Board underlined the importance of Board members' discharging their duty to sit in the cases allocated to them in the particular composition as determined by the provisions applicable thereto, viz, the right of the parties to a hearing before a judge or court in the particular composition as determined by those provisions. This means not only that Board members cannot withdraw from the proceedings at will, but also that the provisions on business distribution must apply for a case re-opened before the board, unless there is a compelling reason for proceeding otherwise, It is therefore appropriate , when exercising the power of discretion conveyed by Rule 108(3), second sentence, EPC, to consider the criteria and standards that have been developed for the replacement of members of the Board of Appeal following an objection of suspected partiality pursuant to Article 24(3) and (4) EPC. Actually, it is the allegation of suspected partiality on which the petitioner's request to replace (also) the rapporteur is based.

11. It is commonly recognised in the jurisprudence of the Boards of Appeal and elsewhere that the suspicion of partiality must be justified on an objective basis and that purely subjective impressions or vague suspicions are not enough (G 1/05, OJ EPO 2007, 362, point 20 of the Reasons). The question whether or not an objection on the ground of suspected partiality is justified can only be decided in the light of the particular circumstances of each individual case (G 5/91, OJ EPO 1992, 617). Such a suspicion is not objectively justified for the sole reason that a position on the matter was adopted in a prior decision of a board of appeal in which the board member concerned had participated (G 1/05, see also J 15/04 of 30 May 2006).

12. In the present case there is nothing concrete in support of a reasonable suspicion of partiality regarding the rapporteur. In particular, it appears that the omission to grant the petitioner an opportunity to present its comments on the question of clarity was a mere oversight to which the rapporteur did not (actively) contribute. Under these circumstances the rapporteur's ability to approach the petitioner's submissions during the re-opened appeal proceedings with an open, unbiased mind is not in doubt, so that the Enlarged Board does not see a reason for exercising its power under Rule 108(3) EPC in the way as requested by the petitioner.

13. This conclusion is not affected by the petitioner's reference to decision T 0584/09 (point XII, above) in which the replacement was decided under Article 24(4) EPC by the Board of Appeal following statements pursuant to Article 24(2) EPC that the two members concerned did not want to participate in the further proceedings in order to avoid suspicion of partiality. In contrast, the present request for replacement (of the one remaining member) is to be decided on by the Enlarged Board of Appeal under Rule 108(3) EPC and in the absence of any objective basis for a suspicion of partiality. It is, however, completely open how, in the re-opened proceedings, the Board of Appeal, in the event of a statement by the member concerned pursuant Article 24(2) EPC or an objection by the party pursuant to Article 24(3) EPC, would decide on the question of replacing that member.

14. The order to reimburse the fee for the petition is based on Rule 111 EPC.