R 0003/16 (Fundamental violation of right to be heard/RHODIA CHIMIE) 06-10-2017

I. The petition for review concerns decision T 355/13 of Technical Board of Appeal 3.5.02 announced on 18 November 2015 and notified on 5 January 2016. This decision dismissed the opponent’s appeal against the decision of the opposition division rejecting his opposition against European Patent 1 127 407. The decision also rejected the request for reimbursement of the appeal fee.

II. The petition was filed by the opponent (hereinafter: petitioner) on 14 March 2016. It is based on (1) fundamental violations of the right to be heard (Article 112a(2)(c) EPC) and (2) several other procedural defects, and Article 125 EPC.

The facts underlying the present petition may be summarised as follows.

III. The decision of the opposition division

The opposition division rejected the opposition on the ground that the subject-matter of claim 1 was novel over D4, which did not disclose neither explicitly, nor implicitly, the claimed Transistors and their connections. Although there had been no objection under Article 56 EPC for lack of inventive step, the opposition division also decided that the subject-matter was inventive starting from D4 as closest prior art. In Part III of the decision, under “Comments not forming part of the decision”, the opposition division gave extra explanations about D4. In Part IV, under “Comments on procedure not forming part of the reasons for the decision” the opposition division also gave its reasons why it did not accept the request for replacement of the members of the division based on a suspicion of partiality.

IV. Appeal proceedings

The petitioner filed an appeal together with new documents (D7 to D12). He requested that the appealed decision be reversed, that the patent be revoked and the appeal fee be refunded.

On 5 December 2013 the Board issued its provisional opinion that, inter alia, (1) the amplifier of claim 1 might be novel over D4, (2) the oral proceedings would provide an opportunity to further discuss novelty and inventive step and in this respect the Board indicated “The question [was] whether the output of substractor 32 of D4 includes a DC-component of the output of the amplifier 15”, (3) the introduction into the proceedings of the newly filed documents would be discussed, (4) as the appeal fee can be reimbursed only if the appeal is deemed to be allowable, the possible procedural violations would be discussed and all the petitioner’s requests addressed.

By way of reply on 16 January 2014 the petitioner replaced his pending requests with new ones. He requested that:

(a) the case be immediately remitted without any oral proceedings to the opposition division before a different composition and the appeal fee be reimbursed,

(b) the rapporteur be excluded considering his incompetence. Document D22 (a search report from the rapporteur) was filed and alleged to support this incompetence. The rapporteur should also be replaced on the basis of Article 24(3)EPC given that the communication accompanying the summons was not compliant with Article 11 of RPBA and infringed the right to be heard (Article 113 EPC),

(c) the Board be enlarged to include a legally qualified member acquainted with the complexity of the right to be heard issue pursuant to Article 21(3)(b) EPC) and Article 9 RPBA,

(d) the oral proceedings be postponed and new summons be issued by the new composition which would deal with the alleged substantial procedural violations committed by the first instance,

(e) the new oral proceedings be dedicated only to the violation of the right to be heard and the remittal,

(f) in the event that the immediate remittal was refused that the Board issue its preliminary opinion about the other requests. The petitioner also requested the possibility to provide evidence, by means of an expert and witnesses, that the subject-matter of claim 1 of the patent was disclosed in D4,

(g) oral proceedings be held in a room where the public and press could witness the correctness of the handling of the proceedings by the Board.

The petitioner further expanded on the alleged procedural violations and raised two new objections under Articles 84 and 100(b) EPC.

The Board cancelled the oral proceedings and issued a communication on 11 November 2014 through the legal member appointed as co-rapporteur whereby it expressed its view that prior to applying the procedure of Article 24(4) EPC, the Board first had to check whether the objection for suspicion of partiality was admissible, and in its view it was not; reasons were given and reference was made to R 12/09 and T 1028/96.

In reply the petitioner sent three letters on 12, 13 and 14 January 2015 wherein he insisted that, should the Board accept his first request to remit the case to the opposition division he would not pursue the procedural violations committed by the Board. He contended that the refusal to remit the case immediately to the first instance amounted to a substantial procedural violation and would give rise to a petition for review.

More specifically in the letter dated 12 January 2015, the petitioner contended that the Board “pieced together” (translation of “zusammenbasteln” used in the petition) its reasons to dismiss the rejection of the objection for suspicion of partiality. The objection was based on Article 24(3) EPC whereas the Board referred to Article 24(1) EPC. The petitioner denied any relevance of the case law quoted by the Board (R 12/09 and T 1028/96). He made clear that the request was based on suspected partiality because the rapporteur committed many procedural violations in his communication. In particular the rapporteur reported the petitioner’s requests incorrectly and ignored the alleged substantial procedural violations at first instance. In addition he did not have the necessary basic and appropriate technical knowledge. The petitioner filed a document D23 corresponding to an advertisement for the post of a technically qualified member of the Boards of Appeal and a description of the skills required to be appointed to this function. The petitioner contended that the rapporteur objected to did not fulfil these standard requirements. The petitioner claimed that the grounds supporting the objection for suspected partiality should be assessed only under the German legal provisions and case law, according to Article 125 EPC. The EPO judicial system was in breach of the fundamental principle of the "separation of instances" in democratic judicial systems. Indeed in the petition for review procedure the members of the Enlarged Board are also members of the Boards of Appeal thereby ignoring the fundamental principles according to Article 125 EPC. Decision R 19/12 underlined the deficiency of the EPO system due to the absence of the separation of powers.

By way of letter dated 13 January 2015, the petitioner commented on the appointment of the legal member as co-rapporteur and argued that he could not be considered as replacing the rapporteur objected to. Decision R 19/12 was submitted with the letter of 14 January 2015.

New oral proceedings were scheduled to take place on 12 November 2015; after a later request of the petitioner, these were postponed to 18 November 2015. In the communication of 9 July 2015 annexed to the summons the Board listed the issues to be discussed, in particular the admissibility of the objection for suspected partiality of the Board in its original composition.

The petitioner called the Chair of the Board of Appeal on 13 July 2015 and inter alia asked him to consult one of the members of the Enlarged Board in R 19/12.

Following this call, the petitioner wrote to the Board (22 July 2015) to object to the unlawfulness of the communication accompanying the summons, since the rapporteur objected to was still a member of the composition. The procedure of Article 24(4) EPC applied equally to the admissibility and merits of the objection. If the Board persisted in maintaining the member objected to, the petitioner would object to the entire composition of the Board. On the other hand, if, after replacing the member objected to, the Board changed its mind about the other issues, it should then set out its preliminary opinion. Otherwise it would be a breach of the petitioner’s right to be heard; it was the petitioner’s assumption that in fact the Board wanted to surprise the petitioner. The petitioner also criticised the rapporteur because he did not give any opinion on the documents D9 and D10 filed with the statement of grounds, which concerned inventive step and the new ground of insufficiency of disclosure. The petitioner contended that the arbitrary replacement of the first rapporteur by the rapporteur objected to and the arbitrary replacement of the legal member without giving the parties any information induced the impression that a “special court” was being composed.

In a further communication of 3 August 2015 the Chairman of the Board made it clear that the changes in the composition had been induced by changes in the business distribution scheme of the Boards of Appeal: the first rapporteur had been appointed into another board and the first legal member had retired. He also made it clear that the composition as well as the alleged procedural violations would be discussed during the oral proceedings.

The petitioner sent new submissions, (24 August 2015, 9 October and 17 November 2015) which can be summarised as follows. He maintained that the communication of 3 August 2015 was unlawful because of the presence of the rapporteur objected to in the composition. He assigned a deadline to the Board of 30 September 2015 to cancel the oral proceedings and remit the case to the department of first instance. Otherwise it would be the entire Board which would be objected to, the petitioner putting this conditional objection into effect in his written submissions of 9 October 2015.

His main issue was that the Board was not entitled to decide on the objection for suspected partiality, be it under admissibility or under the merits, without replacing the member objected to by an alternate. The objection was anyway admissible.

He alleged that the conduct of the Board was a disgrace ("skandalös"). The way in which it handled the case without giving any information about inventive step, questioning the admissibility of new documents, was arbitrary and preposterous. Furthermore the Board was favouring the other party.

Finally, on the day prior to the oral proceedings the petitioner announced he would not be attending because he had not been given the information necessary to prepare his case. He claimed that maintaining the oral proceedings to be held before a Board objected to for suspicion of partiality was unlawful and the proceedings would only be a mockery (“Farce”).

The Board held the oral proceedings in the absence of the parties.

V. The decision under review

The Board decided in its original composition that the objections for suspicion of partiality raised against the rapporteur and the whole Board were inadmissible. The objection against the rapporteur was unsubstantiated. This objection, based on Article 24(3) EPC, was filed in reaction to the communication signed by the rapporteur. It was only a preliminary opinion and the objection was factually erroneous (the communication actually dealt with the alleged procedural violations). The board in its whole composition was objected to because of different procedural violations which were: the rapporteur had not been replaced, no provisional opinion had been provided on decisive aspects of the case, two members of the composition had been changed and the reasons given were not correct, so that it was a “special court” (Spezialtribunal”), and the Board had ignored the request for immediate remittal to the first instance. The Board rejected this objection as inadmissible because it was based on a legally untenable interpretation of the purpose and functioning of the appeal proceedings, the right to be heard and the principle of a fair trial.

The Board further decided that there were no substantial procedural violations committed by the opposition division; that the clarity objection could not succeed since it concerned the claims as granted; that the new ground under Article 100(b) EPC could not be introduced into the appeal proceedings without the consent of the patent proprietor. It upheld the decision with respect to the novelty and inventive step issues.

It dismissed the two objections of the petitioner which could be interpreted as objections under Rule 106 EPC (decision by the Board in its original composition; no preliminary opinion sent prior to oral proceedings).

VI. The petition for review

The arguments in support of the petition may be summarised as follows:

The Board violated the petitioner’s right to be heard in several ways.

(a) The opposition division had committed violations of Rule 116 and Article 113 EPC and the Board failed to deal properly with these procedural violations:

(i) In spite of repeated requests from the petitioner, the Board never informed the petitioner of its preliminary view about the procedural violations allegedly committed by the opposition division with respect to Rule 116(1) EPC and Article 113(1) EPC and issued its final decision directly. The petitioner referred to G 4/92 which stated that a decision against a party who fails to appear at oral proceedings may not be based on facts put forward for the first time during those oral proceedings.

(ii) The Board did not deal with each of the alleged violations in its decision.

(iii) The Board upheld the decision of the opposition division to reject the objection for suspicion of partiality, even though this decision was in breach of the general procedural principles.

(b) The decision by the Board

(i) The Board, on the basis of Article 12(4) RPBA and without any evaluation of the merits of the documents did not admit into the proceedings documents D9 and D10 filed precisely to evidence that the decision under appeal was incorrect in that it held that document D4 disclosed parallel amplifiers (11, 15). It should have immediately remitted the case according to Article 11 RPBA.

(ii) The Board overlooked that the petitioner had only been made aware of the reasons for the rejection of the opposition in the written decision of the opposition division, so that he had had no opportunity to file the documents earlier. It was malicious of the Board to state that the petitioner had withheld the documents, wrongly considering that he could have cited them earlier.

(iii) The Board distorted the petitioner’s arguments put forward to justify the late filing of documents D9 and D10; this was why the petitioner raised an objection for suspicion of partiality against the Board.

(iv) The Board introduced new objections and arguments which were neither in the reasons of the decision under appeal nor brought by the patent proprietor, thereby infringing the principle of prohibition of reformatio in peius. The Board took into consideration the obiter dictum of part III: Comments on substance did not form part of the reasons for the decision, whereas the Board ignored the petitioner’s argument that the unofficial arguments given in the obiter dictum about document D4 had not been submitted to the parties.

(v) In the annex to the summons to oral proceedings sent on 5 December 2013, the Board had indicated inter alia that the question was “whether the output of subtractor 32 of D4 includes a D-C component of the output of amplifier 15”. The petitioner contends that he had not understood it as a question and had given all the necessary arguments for the Board not to decide erroneously, which it however did.

(c) The Board acted in a way that assisted the patent proprietor and justified the objection for suspicion of partiality. It also deprived the petitioner of his right to two instances.

(d) In breach of Article 24(3) and (4) EPC, the Board decided itself that the request based on suspicion of partiality was inadmissible, although none of the grounds for inadmissibility pursuant to Article 24 (3) EPC, namely objection based on nationality, or filed by a party aware of the reason for objection after taking a procedural step, were applicable.

(e) This also amounted to a breach of the established case law of the German Constitutional Court, which should be recognized according to Article 125 EPC.

There is a legal loophole in the EPC in the sense that Article 112a EPC allows a petition for review only in cases where a member of the Board of Appeal took part in the decision in breach of Article 24(1) or despite being excluded pursuant to a decision under Article 24(4) EPC. Therefore in a case such as the present one where there has been a clear violation of Article 24 EPC, Article 125 EPC is to be used and the principles established in most of member states should be applied: there must be a possibility to submit the case to the Enlarged Board.

VII. The Enlarged Board of Appeal, hereinafter Enlarged Board, issued a communication in view of the oral proceedings, in which it expressed its provisional view that the petition for review was clearly unallowable.

The petitioner replied by way of a letter dated 6 September 2017. He confirmed his requests and disputed the view of the Enlarged Board. He contended, inter alia, that there was no provision in the EPC which allowed the conclusion that the silence of a party might affect its right to be heard or that a causal link is needed between the procedural deficiencies and the decision. The petitioner insisted that, unlike the Enlarged Board’s view, the decision by the Board on the alleged substantial procedural violations committed by the first instance came as a surprise and amounted to a substantial procedural violation. Likewise, whereas the aim of appeal proceedings is to review whether the appealed decision was correct, the refusal to remit the case and the non-admission of pieces of evidence deprived the petitioner of his right to two instances.

Eventually the Board played down the pertinent objection for suspected partiality and improperly dealt with the objection itself, instead of handing the objection over to an alternate composition - which is a breach of Article 24(4) EPC and Article 6(1) ECHR. In such a case, attending oral proceedings would have been pointless since any request regarding the objection for suspected partiality would have been rejected. There is no basis in the EPC to draw any consequence for the right to be heard from the non-attendance of a party at oral proceedings and the case law referred to by the Enlarged Board did not concern cases where the Board’s impartiality was being challenged.

Two days prior to oral proceedings, observations (“Amicus curiae Eingabe”) were sent by a third party followed by a letter from the petitioner indicating that he endorsed those submissions.

VIII. Oral proceedings were held on 6 October 2017.

The petitioner’s final requests were the following:

- to set aside the decision under review

- to reopen the proceedings before the board of appeal in a different composition

- to reimburse the petition fee.