R 0001/13 (Petition for review/NTT) 17-06-2013

Admissibility

1. It appears to the Enlarged Board that the petition was filed within two months of notification of the decision in question, that the petitioner was adversely affected thereby, that the prescribed fee was paid in time, and that (subject to the formal defect of the omission of the petitioner's address, subsequently corrected) the petition complied with Rule 107 EPC.

2. In its preliminary opinion the Enlarged Board posed the questions (see section IV.2 and 3 above) why the case made in the petition that the Board of Appeal was obliged to admit, and/or had no discretion not to admit, the new requests was not addressed to the Board of Appeal and, whether such arguments were in fact addressed to the Board or not, an objection under Rule 106 EPC was not made that, by not admitting the new requests when it had to, the Board would be in contravention of Article 113(1) EPC.

3. The petitioner answered this point by submitting (see sections VII.11.2 and 11.3 above) that, because the chairman had given an indication that the new requests were clear, the petitioner had no reason to make and was not induced to make the submissions on admissibility in the petition and, because of that positive indication, there was no reason to expect that a procedural violation would occur and thus no objection was raised under Rule 106 EPC that, by not admitting the new requests when it had to, the Board would be in contravention of Article 113(1) EPC. For the reasons mentioned below in relation to allowability (see point 18 et seq), the Enlarged Board considers this argument based on the petitioner's interpretation of what it claims to have been a positive indication to be unconvincing.

4. The petitioner also submitted (see section VII.3 above) that the proviso in Rule 106 EPC should apply because an objection against the alleged procedural defect could not have been raised before the decision was rendered. The Enlarged Board can see that, on the petitioner's own account of the oral proceedings, including its unconvincing interpretation of the chairman's observation, it can allege that it did not know of the alleged procedural violation until after the appeal proceedings were closed.

5. Whether it is correct to allow the application of the proviso in Rule 106 EPC when the reason advanced for the inability to raise an objection arises, in part or in whole, from a petitioner's own misguided appraisal of events is a matter which need not be decided in this case in view of the Board's decision that the petition is clearly unallowable.

Allowability

6. The petition goes to considerable - and unnecessary - lengths to demonstrate matters of fact which the Enlarged Board sees as established from the file, namely:

(a) that the Board of Appeal's objection under Article 84 EPC against claim 1 of the second auxiliary request was raised for the first time during the oral proceedings before the Board;

(b) that the new requests were filed during the oral proceedings in response to that objection; and

(c) that the chairman of the Board remarked that the claims of those newly filed requests appeared to be clear.

7. While there is inconsistent evidence as to whether the chairman's remark was made at the beginning or at the end of the debate on the admissibility of the new requests, the petitioner places the same reliance on the remark regardless of when it was made and even accepts the possibility that it was made both at the beginning and at the end of the debate (see sections III.8 and IV.2 above). Thus the Enlarged Board sees no need to decide when during that discussion the remark was made. However, the Enlarged Board does not share the interpretation which the petitioner has placed on the remark (see point 18 et seq below).

8. Article 113(1) EPC provides:

"(1) 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."

9. The only violation of that provision alleged by the petitioner is the decision of the Board of Appeal not to admit the new requests into the appeal proceedings. However the Enlarged Board cannot find any suggestion in the petition of a denial of the petitioner's opportunity to present its comments on the admissibility of those requests. Indeed, the petitioner refers to and relies on the discussion of the admissibility of those requests which took place during the oral proceedings. Further, the petition itself, all of the five declarations filed therewith, the petitioner's request to amend the minutes, the respondent's observations on that request, and the Board's communication responding to that request all refer to such a discussion. Further still, while the minutes of the oral proceedings do not actually mention the discussion on that subject they do, by reference to the filing of the new requests with annexed copies and by reciting the formal requests of the petitioner, provide further confirmation that a discussion of the new requests took place. The same is true of the Board of Appeal's written decision which refers to the filing of the new requests and the appellant's view thereon.

10. The Enlarged Board's case law makes clear that it is sufficient for the purposes of Article 113(1) EPC that a reason for a decision under review corresponds to an argument which has been put forward by another party so that the petitioner was aware of it and thus was not taken by surprise. In such circumstances and in the absence of any contention or indication that a Board of Appeal has refused to hear the petitioner, it cannot be established that the petitioner had no opportunity to comment within the meaning of Article 113(1) EPC (see R 4/08 of 20 March 2009, reasons, point 3.3).

11. In decision R 4/08, the petitioner was the opponent and the decision related to that opponent's alleged lack of opportunity to comment on the admissibility of the patent proprietor's new requests. The principle in that decision must apply with at least as much - if not more - force when, as in this case, the petitioner is the patent proprietor and the issue is the admissibility of the petitioner's own requests. It is not merely undisputed fact but also part of the case advanced by the petitioner that it knew the objection (lack of clarity) to its previous request, that it filed its new requests to overcome that objection, that it argued its case for admissibility of those requests, and that the Board decided not to admit the requests because they were prima facie not clear and thus did not overcome the objection. Far from showing a denial of an opportunity to comment, the petition confirms that the opportunity occurred.

12. The petitioner's view of Article 113(1) EPC (see section VII.4 to 8 above) appears to be at variance with the case law (see point 10 above) and the Enlarged Board does not agree with the petitioner's various arguments based on its view of the law. The petitioner refers to Article 113 EPC but quite clearly intends only Article 113(1) EPC. Its arguments, four in number, are to the effect that the Board of Appeal did not consider the new requests sufficiently or was obliged to admit the new requests or exercised its discretion incorrectly and each argument is said to demonstrate a violation of Article 113 EPC. That is inconsistent with the petitioner's statement in the petition (see the first paragraph under "Grounds and Admissibility" on page 1):

"The present petition is filed under Article 112a(2)(c) EPC on the grounds that a fundamental violation of Article 113 EPC occurred in the appeal proceedings of case T0808/11-3.5.03. The negatively affecting decision, hereinafter also "the decision", violates Article 113 EPC in having not admitted the new third and fourth auxiliary requests (also "the new requests") into the proceedings and in having dismissed the appeal immediately after announcing the non admittance."

It is evident that the decision of the Board of Appeal is the only alleged violation of Article 113 and that the petitioner's arguments do not each demonstrate a separate violation but are intended to provide reasons why the decision is said to be a violation. The Enlarged Board considers each of the four arguments in points 13 to 17 below.

13.1 The petitioner's first argument is that Article 113 EPC enshrines the possibility of a full reaction to overcome any late-raised objection, a right that can only be safeguarded by allowing a full discussion on the merits of new requests filed in response to a late objection which in turn can only be achieved by admitting such new requests. A prima facie assessment to establish whether a new request is likely to overcome an objection is not adequate to satisfy this supposed right to a thorough discussion under Article 113 EPC of all the points at issue. As support for this proposition, the petitioner cited a passage from decision R 3/l0 (at point 2.10 of the reasons).

13.2 This argument is based on the false premise that "Article 113 EPC enshrines the possibility of a full reaction to overcome any late raised objection". In fact Article 113(1) EPC does no such thing. It simply provides that decisions shall not be based on matters on which parties have not been heard or, to be precise, on which parties concerned have not had an opportunity to comment. The decision in question here was whether or not to admit the petitioner's new requests and, as already explained (see point 9 above), the petitioner had and used the opportunity to comment on that issue.

13.3 The petitioner's suggestion that the right to be heard carries with it, in the case of requests filed in response to late objections, a right to a full discussion which transcends the requirement of admissibility is simply incorrect. A late objection may lead to more latitude in the filing of requests in response but there is no certainty of admissibility, let alone of a more thorough discussion if admissibility is achieved. If the petitioner was correct, any request filed in response to a late objection would be admissible even if it clearly had no prospect of overcoming the objection. The requirement of admissibility for late-filed requests serves several purposes - inter alia to ensure the requests offer a prospect of success - and the requirement is not suspended for latecomers, however understandable the lateness of filing their requests may be. If that were not the case, Article 13 RPBA would have little or no purpose (as the petitioner's second argument tacitly recognizes - see point 14.2 below).

13.4 In decision R 9/11 of 7 December 2012 (see reasons, point 3.2.2) the Enlarged Board held that Article 13(2) RPBA, which gives parties a right to comment on new submissions filed by others, does not give those parties automatic admissibility of their new requests; it follows that there can be no such right of automatic admissibility for those making the new submissions. The petitioner submitted (see sections VII.11.3 and VII.12.3) that R 9/11 was distinguishable from the present case and, in as much as the facts are different, that is correct but that does not mean that the legal significance of the earlier case is to be ignored (see R 11/08 of 6 April 2009, reasons, point 11). The procedure for new requests is in fact well summarized in the warning to the appellant in the Board of Appeal's communication of 26 March 2012 (see section III.2 above):

"If amended claims are filed by the appellant, it will be necessary at the oral proceedings to discuss their admissibility and, if these claims are held admissible, to discuss the question of whether or not the amendments, the claims and their subject-matter comply with the requirements of the EPC..."

The Enlarged Board also notes that, in the opposition proceedings, the petitioner filed an amended first auxiliary request during the oral proceedings which was held inadmissible for several reasons, apparently after the Opposition Division had conducted the usual admissibility appraisal without (so far as the Opposition Division's decision and the minutes of the oral proceedings show) any objection on the part of the petitioner.

13.5 The petitioner's only support for its argument was a one-sentence passage it cited from the Enlarged Board's decision R 3/10 which, with an insertion added by the petitioner, reads:

"This right [the right to be heard] would be undermined if it were made dependent on an evaluation as to whether the party's standpoint is likely to be justified".

The complete passage from which that sentence is taken reads as follows:

"It is the very essence of the right to be heard that the party is given a full opportunity to defend its case and to persuade the deciding body that its position is the correct one. This right would be undermined if it were made dependent on an evaluation as to whether the party's standpoint is likely to be justified".

Thus, in the case of the admissibility of its new requests, the petitioner had to be given a full opportunity to defend its case for admissibility and to persuade the Board of Appeal that its position was correct. As already observed (see point 9 above), that is what happened in the present case. In its proper context, the second sentence means no more than that a party should not be denied an opportunity to be heard because he may ultimately succeed or fail. That also happened in the present case in which the petitioner was heard on the admissibility of the new requests even though it ultimately lost (although it would appear from the petitioner's own view of the chairman's remark that the Board's evaluation while hearing the petitioner was that it was likely to succeed). The passage from R 3/10 is entirely consistent with the Enlarged Board's other jurisprudence on the right to be heard (see points 10 to 11 above).

14.1 The petitioner's second argument is that Article 113 EPC overrules Article 13(l) RPBA since the fundamental right to a thorough discussion of new requests filed in response to late-raised objections can neither be overruled by an assessment as to the likelihood of a new request overcoming that objection nor be considered late-filed, so the Board has no discretion in respect of the admissibility of such requests.

14.2 This argument is no more than a necessary corollary of the previous argument which, as already observed (see point 13.3 above) would mean that Article 13 RPBA has little or no purpose. It is therefore an argument which the petitioner had to make to be consistent. However, the reasons for rejecting the argument are also consistent with those for rejecting the previous argument - it starts from the same false premise of a "right to a thorough discussion" and, once that false premise is dispelled, the argument cannot take matters any further.

15. The petitioner's third argument is that, according to consolidated EPO jurisprudence (an expression the petition does not explain), prima facie examination is a legal assessment for excluding those late filed submissions which represent an abuse of the procedure. Since in the present case, the petitioner was responding with new requests to a late objection, the new requests were not an abuse of procedure so a prima facie assessment resulting in non-admissibility was also a fundamental violation of the right to respond fully to new issues and represents a fundamental violation of Article 113 EPC. Again, this argument supposes that the petitioner's fallacious view that Article 113 EPC provides a "right of full response" which would avoid any requirement of admissibility is correct. The argument is also circuitous and self-serving - it pre-supposes that an admissibility assessment is only required for submissions which represent (undefined) abuses of procedure, then asserts that the petitioner's new requests were not an abuse of procedure, and thus absolves those requests from the need for an admissibility assessment.

16.1 The petitioner's fourth and final argument was that, despite the previous arguments and assuming that the Board did have a discretion under Article 13(1) RPBA not to admit new requests in response to late objections, the Board exercised that discretion in an unduly restrictive manner. Thus, by reference to the provisions of that Article, the new requests could not be considered late and did not introduce any complexity as they attempted to overcome the objection; the state of the proceedings could not apply since the petitioner was responding to a new objection to terms which had been on file since the beginning of the appeal procedure; and procedural economy could not justify the adverse exercise of discretion since that would outweigh the right of the petitioner to defend its case. Thus the Board's exercise of its discretion under Article 13(1) RPBA offended the more fundamental rights enshrined in Article 113 EPC.

16.2 Yet again this argument supposes "more fundamental rights enshrined in Article 113 EPC" than can be read into that Article and, additionally, that those rights alleged to flow from Article 113 EPC override Article 13 RPBA. It is a combination of the three earlier arguments presented as an assessment by reference to the three criteria - complexity of new subject-matter, the state of the proceedings, and procedural economy - mentioned in Article 13(1) RPBA. The petitioner however overlooks that Article 13(1) RPBA states that the Board's discretion shall be exercised in view of inter alia those criteria. Thus other considerations relevant to the admissibility issue in question can, and in practice are, taken into account. In the case of a new request with amended claims, one well-established criterion is whether the claims are likely to overcome the objection or objections in response to which the request has been filed.

16.3 While the exercise of its discretion by the Board in this particular case is a substantive issue with which the Enlarged Board cannot interfere in petition proceedings (see for example R 9/11 of 7 December 2012, reasons, point 3.2.1), it seems highly probable that in arriving at the decision under review the Board of Appeal did use the criterion of whether the claims were likely to overcome the objection in question. That is not only suggested by the reference in the respondent's letter of 12 November 2012 to a detailed discussion on admissibility which ranged across clarity, support, added matter, novelty and inventive step (see section III.7 above), but is endorsed by the petitioner itself which referred to that reference as an acknowledgment that a substantial amount of the argument at the oral proceedings was about the admissibility of the new requests (see section VII.12.1 above), and is also confirmed by the decision under review which states in terms (see reasons, points 6.1 and 6.2) that the new requests were inadmissible because they were not clear within the meaning of Article 84 EPC.

17. For the reasons in points 9 to 16 above, and apart from the fact that the petition itself shows that the petitioner had an opportunity to comment on the admissibility of the new requests, the Enlarged Board cannot accept that the petitioner's arguments demonstrate any violation of Article 113 EPC. In further support of that conclusion the Enlarged Board notes, as it did in its preliminary opinion, that the petition offers no explanation as to why, when the petitioner had the opportunity to discuss admissibility of the new requests before the Board of Appeal, it made no reference to the arguments on which it now relies to show a violation of Article 113 EPC. If, when it filed the new requests, the petitioner believed that the requests were automatically admissible and that the Board had no alternative but to proceed directly to a consideration of their allowability, it is to say the least strange that it did not make that submission to the Board of Appeal. The petitioner's only answer to this is that it did not do so because of the chairman's comment, or more precisely the interpretation the petitioner placed upon that comment. However, the petitioner and its representative were responsible for the conduct of their case and it was for them to submit the necessary arguments to support their case on their own initiative and at the appropriate time (see R 2/08 of 11 September 2008, reasons, points 8.5 and 9.10; and R 13/11 of 20 April 2012, reasons, point 18). That they did not say to the Board of Appeal when, as the case they now make in the petition proceedings makes clear, they had the opportunity to do so, that the Board was obliged to admit the new requests can only mean either that they did not at the time believe in (or perhaps even think of) those arguments and/or that they chose not to make the submission.

18. All its previous arguments being wholly unconvincing, the only remaining argument deployed by the petitioner to support a denial of opportunity to comment is that the petitioner was surprised by the decision not to admit its new requests because of the remark by the chairman of the Board that the requests appeared to be clear. The petitioner submitted, though not in the petition, that it took that remark as a ruling on admissibility and that the legal basis for that is Article 15(4) RPBA (see section VII.12.2 above). The Enlarged Board also finds this argument unconvincing for three reasons - the very nature of the remark, the purported legal basis of the argument, and its own jurisprudence on "surprise" arguments.

19.1 As regards the nature of the chairman's remark, the Enlarged Board notes that it was no more than a remark by one member of the Board of Appeal during the discussion on the admissibility of the petitioner's new requests. Prior to the petition - in the petitioner's request to amend the minutes of the oral proceedings - and in the declarations filed with the petition, it is only referred to as an "indication" or "expression" by just the chairman. In the petition however it is elevated to the status of an indication or opinion of the whole Board, for example:

"the positive indication given by the Board" (page 2),

"the Board acknowledges that the positive opinion was given" (page 9) and

"the Board gave an indication" (also page 9),

and this is used to suggest there was a

"sudden change of opinion of the Board" (page 13).

The petitioner then proceeds to suggest that it was mislead by alleging that

"correctly relying on this positive indication given by the Board, [it] had no doubts that at least admissibility of the new requests was accepted" (page 2)

and that it

"could reasonably assume that any further submissions or requests were superfluous and thus refrained, in order to behave according to indications of the Board and to avoid an unnecessary lengthening of the oral proceedings, from presenting further arguments" (page 13).

At the oral proceedings before the Enlarged Board, the petitioner went still further (see section VII.12.2 above) and called the remark a "ruling" on the admissibility of the requests which meant that the clarity objection had been overcome. It also submitted that it was "made to rely" on the chairman's indication (see section VII.12.5 above) as if it was compelled to accept it without question.

19.2 The Enlarged Board sees no merit in such re-interpretation of a remark made by one member of the Board into first an opinion of the whole Board and subsequently into a ruling of the Board. The petitioner and its representatives must have known at the time that the remark was that of one member only and any additional significance they gave it had nothing to do with the proceedings. To seek subsequently to elevate the remark into something more in order to support a petition for review is not merely unconvincing but implausible. The submission that the chairman's remark prompted the petitioner's representative to take instructions from the petitioner on a possible remittal of the case to the Opposition Division carries no weight - the fact that the petitioner or its representative chose to take any steps on the basis of their inherently implausible interpretation of the remark cannot make that interpretation any less implausible.

19.3 The very wording of the petitioner's argument reveals its weakness. It claims that the positive indication of the chairman's remark meant there was no expectation that the Board would conclude that the new requests would not be admitted so no objection could have been raised by the petitioner (see section VII.2 above). Such an argument is logically flawed: the expectation of one (desired) result does not preclude arguing against another (undesired) result. The petitioner's various submissions on this theme all suffer from this "would/could" weakness, for example:

"Based on the Board's positive indication, the petitioner could reasonably assume that any further submissions or requests were superfluous and thus it refrained from presenting further arguments" (see section VII.10 above);

"the chairman had given an indication that the new requests were clear so the petitioner had no reason to make and was not induced to make further submissions" (see section VII.11.1 above); and

"No objection was raised under Rule 106 EPC because, on the basis of that positive indication, there was no reason to expect that a procedural violation would occur" (see section VII.11.2 above).

It is apparent that the petitioner conducted its case in reliance on its own assumptions. It was of course entitled to do that - as already observed (see point 17 above), the petitioner and its representative were responsible for the conduct of their case and it was for them to submit the necessary arguments to support their case on their own initiative and at the appropriate time (see R 2/08 of 11 September 2008, reasons, points 8.5 and 9.10). It follows that only the petitioner and its representative can be responsible if such assumptions prove incorrect and the petition for review procedure is not a remedy for the consequences.

20. As regards the legal basis for the argument, the Enlarged Board observes first that the petitioner did ultimately acknowledge the weakness of the argument when, in reply to a question asked during the oral proceedings, it agreed that the chairman of the Board had not actually said that the new requests were admissible. It thus became plain beyond doubt that the petitioner's argument was based only on the interpretation it had chosen to give to the remark. The Enlarged Board also has no hesitation in dismissing the petitioner's argument that Article 15(4) RPBA has the effect that, if a chairman gives an indication, a party has to rely on it. Article 15(4) RPBA reads:

"The Chairman presides over the oral proceedings and ensures their fair, orderly and efficient conduct."

Those words simply cannot be interpreted to mean that a remark or indication by the chairman has to be relied on by a party without question, let alone that it has the status of a ruling or the removal of a previous objection. If the chairman could make remarks with any such effect during oral proceedings and before the parties have concluded their submissions, that would in itself amount to a violation of Article 113(1) EPC. It would also contradict Articles 15(5), 15(6) and 19(1) RPBA.

21. Lastly the Enlarged Board observes that this line of argument is contrary to its established case law which has consistently held that, while surprise may be an understandable subjective reaction of a party which expects to but does not succeed, it cannot affect an objective review of the decision - so if the petitioner knew the issues which might be raised and had an opportunity to comment thereon, its subsequent surprise is of no relevance (see R 12/09 of 15 January 2010, point 13 of the Reasons; R 15/10 of 25 November 2010, point 11 of the Reasons; R 13/11 of 20 April 2012, reasons, point 18; and in particular R 6/11 of 4 November 2011, reasons, point 5.3, in which as in the present case the petitioner's belief that the Board would decide in its favour was held to be immaterial to the fulfillment of requirements pursuant to Article 113(1) EPC).

22. The petition does not show that any denial of opportunity to comment occurred and thus no violation of Article 113 EPC has been established. Therefore it is not necessary to consider the petitioner's arguments that the alleged violation was fundamental. It follows from the absence of any violation of Article 113 EPC that the petition is clearly unallowable.