R 0006/17 (Petition partially clearly inadmissible and partially clearly unallowable) 28-05-2018

Reasons for the decision

1. Scope of the petition

As clarified by the petitioner during the oral proceedings, the present petition for review is built on the allegation that the appeal proceedings leading to the decision under review involved a fundamental violation of the petitioner's right to be heard (Articles 112a(2)(c) and 113(1) EPC) in that

(1) the Board had refused to admit into the appeal proceedings D2 and the petitioner’s novelty and inventive step attacks based on this document under Article 13(1) RPBA;

(2) the Board had based its decision on an incorrect assumption with respect to the definition of the technical effect of the distinguishing feature;

(3) the Board had not decided on or, at least, had not reasoned why the claimed subject-matter involved an inventive step in view of the combination of the teachings of D4 and D1;

(4) the Board had not decided on the patent proprietor’s request for accelerated processing and had conducted the appeal proceedings in a procedurally restrictive manner as if it had granted that request.

2. Admissibility of the petition for review

2.1 The petitioner is adversely affected by decision T 751/16 setting aside the decision of the opposition division revoking European Patent No. 1 625 971, maintaining the patent as granted, and dismissing both the petitioner’s requests for remittal of the case to the opposition division and their objection under Rule 106 EPC.

2.2 The written decision was notified to the parties by registered letter with advice of delivery posted on 23 June 2017. As the reasoned petition was filed and the fee was paid on 22 August 2017, it also complies with Article 112a(4) EPC.

2.3 Rule 106 EPC provides that a petition for review under Article 112a(2)(a) to (d) EPC is only admissible where an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the Board of Appeal, except where such objection could not be raised during the appeal proceedings.

2.4 The petitioner submitted an objection under Rule 106 EPC in respect of complaint (1) and argues that with regard to complaints (2) to (4) they could not have submitted any such objection because they became aware of the alleged deficiencies only after the Board had announced the decision at the end of the oral proceedings and/or notified the reasoned decision in writing.

2.5 Rule 106 EPC has been clearly complied with as regards complaint (1).

2.6 Concerning complaint (2) the petitioner objects to the definition of the technical effect of the uncontested distinguishing feature f) of claim 1 by the Board and argues that they were denied an opportunity to make submissions on this issue because they had assumed that the Board would define the technical effect differently, i.e. correctly as they had themselves done. However, the Board had already indicated the definition of the technical effect in its preliminary opinion under point 1.1: “The effect and the problem to be solved with the ornament seem to be described in paragraph [0051] of the published application (cf. P [0054] of the patent description).” It is this definition mentioned by the Board in the decision under review (point 2.3 on page 10, last paragraph) that the petitioner referred to as critical. The issue of inventive step of the claimed subject-matter, of which the definition of the technical effect of the distinguishing feature forms an indispensable part, was discussed with the parties at the oral proceedings (cf. minutes of the oral proceedings before the Board, page 2, second indent).

Against this background, the petitioner’s allegation that they had no opportunity to submit arguments on the Board’s “incorrect” definition of the technical effect, and that, therefore, they had been denied the right to be heard, remain incomprehensible and are considered as a sweeping argument. Rather, the Enlarged Board notes that, whilst the assessment of inventive step cannot be considered in review proceedings (cf. R 1/08, Reasons, point 4; R 12/09 of 15 January 2010, Reasons, point 14; R 14/13, Reasons, point 6.2.4.2; R 6/15, Reasons, point 13, none published in the OJ EPO), the petitioner had been given the opportunity to submit their arguments in the course of the discussion of inventive step on the basis of the well-established problem-solution-approach, which includes i.a. the issue of the technical effect of the distinguishing features.

Hence, due to a lack of comprehensive substantiation by the petitioner in respect of complaint (2) the Enlarged Board cannot identify a deficiency in the appeal proceedings to which the petitioner could not have been objected before the Board announced the decision under review.

2.7 Regarding complaint (3) the petitioner criticises a lack of reasoning of the decision under review with regard to a line of argument for lack of inventive step in view of a combination of the teachings of D4 and D1. The petitioner alleges that this issue was discussed at the oral proceedings. However, the minutes of the oral proceedings before the Board mention only D4 in the context of the discussion about inventive step of the subject-matter of claim 1 and the Board’s conclusions, of which the parties were informed by the Chairman after the deliberation of the Board (cf. minutes of the oral proceedings before the Board, page 2, second indent and the following paragraph). Likewise, the Board’s preliminary opinion is silent as to D1, which had been mentioned in the petitioner’s reply letter to the patent proprietor’s statement setting out the grounds of appeal only randomly (cf. letter of 11 October 2016, one sentence each on pages 21 and 22). It is further noted that the minutes were sent to the parties by registered letter dated 10 March 2017, i.e. four days after the date of oral proceedings, and that the petitioner neither objected to nor requested a correction of the minutes. The minutes are to be considered a sound reproduction of the course of the oral proceedings before the Board from which it could be deduced that the petitioner had had ample opportunity to remind the Board of the need to discuss the teaching of D1 and to submit an objection under Rule 106 EPC in the event of the Board refusing that discussion.

As a consequence, the petitioner’s complaint (3) is to be qualified as either unsubstantiated or, at least, precluded from further assessment due to the omission of an objection under Rule 106 EPC.

2.8 Complaint (4) of the petitioner is directed to a request for accelerated processing filed by the patent proprietor (sic!, cf. letter of 25 May 2016, page 1) objected to by the petitioner (cf. letter of 11 October 2016, point 2 on page 2). Even if the petitioner was right in their contention that the Board had failed to decide on this request, the petitioner was by no means negatively affected by the alleged deficiency. The petitioner attempts to justify an adverse effect by arguing

(a) that the Board had conducted the proceedings in a restrictive manner as if it had granted the request for accelerated processing, thus leaving the petitioner in uncertainty as to the potential need to adapt their strategy accordingly; and

(b) that had the Board been obliged to deal with the allegation of patent infringement that justified the request for accelerated processing, it would have recognised that there was actually no infringement of the patent.

However, the petitioner misconceives the nature and scope of a request for accelerated processing. In deciding whether or not to allow such a request, the competent board of appeal merely needs to examine the circumstances that are submitted as justification for the request. Patent infringement proceedings or negotiations on licensing might be considered as justification. But there is neither a need nor an opportunity for a board of appeal to examine the likelihood of success of those proceedings or talks.

The Enlarged Board does not know why the Board did not decide separately on the request for accelerated processing. It is possible that the Board considered that the overall circumstances of the proceedings, in particular the summoning to oral proceedings only nine months after the commencement of the appeal proceedings, were a clear enough indication to the parties that the processing was indeed accelerated. In any event, it is up to the parties to address a point that they consider relevant and that they believe might be overlooked and, where appropriate, to make a formal application for it to be dealt with and for a ruling (cf. R 17/11, not published in the OJ EPO, Reasons, point 19). If then a Board of Appeal does not give a party the opportunity to bring forward its arguments, this may give rise to the complaint that the right to be heard under Article 113(1) EPC was infringed. However, in the present case, this is obviously not the case. The petitioner confirmed during the oral proceedings before the Enlarged Board that they had understood the “restrictive manner” in which the Board had conducted the appeal proceedings as being the consequence of the patent proprietor’s request for accelerated proceedings. Thus, the petitioner had obviously assumed that said requests had been granted and acted upon by the Board and, hence, they could and should have adapted their procedural strategy accordingly, or could and should have raised this issue either in writing or at the oral proceedings.

The Enlarged Board, therefore, is not in a position to identify a deficiency in the appeal proceedings of which the petitioner became aware only after the Board had announced the decision under review and/or after the reasoned decision had been notified in writing.

2.9 For the aforementioned reasons, the petition for review is clearly inadmissible in respect of complaints (2) to (4), but not concerning complaint (1). As a consequence, the assessment of its allowability is limited to complaint (1).

3. Allowability of the petition for review with regard to complaint (1)

The petitioner submits that the Board decided on the appeal in violation of Article 113(1) EPC in a manner that gave the petitioner no opportunity to introduce D2 into the appeal proceedings and present a new line of novelty and inventive step attack based on D2.

3.1 It has to be borne in mind that review proceedings under Article 112a(2)(c) EPC are confined to procedural defects so fundamental as to be intolerable for the legal system and overriding the principle that proceedings that have led to a final decision should not be reopened in the interest of legal certainty and that substantive issues are excluded (consistent case law since R 1/08, not published in the OJ EPO, Reasons 2.1, and the travaux préparatoires there cited).

3.2 The facts of the case, as taken from the minutes of the oral proceedings before the Board and from the decision under review, show that the Board was not only aware of the petitioner's substantive arguments in respect of the new novelty and inventive step attack based on D2 but also as regards the petitioner’s arguments justifying the late submission (cf. minutes, pages 2 and 3; decision, Facts and Submissions, points V. and VII., Reasons, point 3). The Board, in particular, referred to the petitioner's arguments that the new submission had been made in reaction to the Board’s preliminary opinion, that the petitioner had considered D2 highly relevant for novelty, and that D2 had already been in the appeal proceedings because it had been submitted during the opposition proceedings that were then reviewed by the Board. The petitioner's arguments had thus been considered in detail by the Board in exercising its discretion under Article 13(1) RPBA; Article 13(3) RPBA is applicable as well.

Thus, in the decision under review the Board extensively recapped and discussed the key arguments put forward by the petitioner.

3.3. Although the petitioner invokes that they were not given an opportunity to state their case in view of the alleged lack of novelty and inventive step of the subject-matter of claim 1 over the disclosure of D2, it is to be noted from the aforementioned facts that the Board took its decision solely on the basis of the arguments submitted by and discussed with the parties.

The petitioner does not claim that the decision under review was guided by any other (i.e. non-discussed) matters and arguments on this. What the petitioner essentially refutes is not that the Board did not allow arguments to be submitted on matters that were then considered by the Board in exercising its discretion under Article 13(1) RPBA, but that the petitioner’s arguments were wrongly "categorised" or "subsumed" under the requirements of said provision.

3.4 Hence, it is to be concluded from the petitioner's own submissions that the alleged application of wrong criteria should be judged a fundamental procedural violation. The petitioner objects in particular to the Board’s conclusion that the petitioner created a “fresh case” that added to complex technical issues requiring a substantially different discussion as compared to the case based on D4, and that it was contrary to procedural efficiency to admit it into the appeal proceedings.

3.5 The discretionary power conferred to a board of appeal by Articles 12 and 13 RPBA and by Article 114 EPC necessarily implies that the competent board of appeal must have a certain degree of freedom in exercising its discretionary power. The Enlarged Board should review the way in which the board of appeal has exercised its discretion when deciding on a particular case and must not consider substantive issues.

In accordance with the established jurisprudence of the Enlarged Board (cf. R 10/09, Reasons, points 3.2, 3.3 and 5; R 9/10, Reasons, points 7 to 10; R 9/11, Reasons, point 3.2.1; R 10/11, Reasons, point 5.2; R 11/11, Reasons, point 8; R 13/11, Reasons, point 4; R 1/13, Reasons, point 16.3; R 4/13, Reasons, point 5.5; R 5/13, Reasons, point 15; R 7/13, Reasons, point 4; R 9/13, Reasons, point 15; R 10/13, Reasons, point 15; R 11/13, Reasons, point 15; R 12/13, Reasons, point 15; R 13/13, Reasons, point 15; R 4/14, Reasons, point 11; none of these decisions published in the OJ EPO; Case Law of the Boards of Appeal, 8th edition 2016, chap. IV.F.3.3.3, p. 1228, and chap. IV.F.3.13.16, p. 1240), the Enlarged Board has no power to control the normal exercise a board of appeal makes of its discretion. Rather, the exercise of discretion by a board of appeal is subject to only limited review. Thus, it is the task of the Enlarged Board to review whether the Board did not abuse its discretion in an arbitrary or manifestly illegal manner whilst respecting the petitioner’s rights under Article 113(1) EPC.

3.6 Article 13(1) RPBA reads:

“Any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the Board's discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.” (emphasis added)

The Enlarged Board notes that the “prima facie” relevance of a document, upon which the petitioner relies as the most significant criterion of Article 13(1) RPBA, is not listed explicitly in that provision; nor is it mentioned in Article 13(3) RPBA dealing with amendments of a party’s case after the summons to oral proceedings. However, the list of criteria in Article 13(1) RPBA is non-exclusive (“inter alia”), and the criterion of prima facie relevance has been applied by some boards of appeal as one criterion amongst others (cf. Case Law of the Board of Appeal, supra, chap. IV.C.1.1.4, p. 933).

Nonetheless, when comparing the reasons given by the Board in the decision under review with the wording of Article 13(1) RPBA, it is obvious that the Board, while clearly referring to terms of Article 13(1) RPBA, took into consideration those criteria that are explicitly mentioned in that provision. In other words, the Board did not apply wrong criteria leading to an abuse of discretionary power; rather it took into account statutorily accepted, i.e. the right, criteria.

Moreover, contrary to the petitioner’s conclusion, based on the case law on late-filed documents, that the prima facie relevance is the decisive criterion, this criterion is certainly neither the most relevant nor does it stand alone, i.e. without interdependence on other criteria. The interest in procedural expediency and procedural economy is also expressed in the common approach not to admit late documents which, prima facie, are no more relevant than what is already on file (cf. of T 1557/05, Reasons, point 2.4, and T 1883/12, Reasons, point 3.1.3, neither of which are published in the OJ EPO).

3.7 Thus, the petition for review is not about an alleged error by the Board in choosing and applying the right and avoiding the wrong criteria but rather it is about whether the Board’s exercise of discretion on the merits was correct or incorrect.

The petitioner may well disagree with the Board’s conclusion, but the power of the Enlarged Board to review a decision as to the exercise of discretion within the framework of Article 112a EPC is limited and, in the case at hand, clearly cannot be justified on the basis of an alleged abuse of discretionary power.

3.8 As to the alleged unreasonableness of the Board’s exercise of discretion, the petitioner in particular argued that the Board had been wrong in its assumptions that the petitioner had created a “fresh case”, that admitting D2 had substantially delayed the appeal proceedings, and that the petitioner could have introduced D2 and their novelty and inventive step attack based on this document earlier in the appeal proceedings.

3.9 The Enlarged Board notes that the Board dealt with these points in detail in the decision under review under points 3.2 and 3.3 of the Reasons:

“3.2 … It is only … after receiving the communication of the Board according to Article 15(1) RPBA, that the respondent filed submissions concerning lack of novelty over D2 and lack of inventive step starting from D2. These submissions cannot be seen as a reaction to the communication …, as the opinion of the Board in respect of whether some features of the claim are disclosed or not by D4 does not justify raising a case on novelty and inventive step based on another document. The Board, moreover, did not include any element, such as a new interpretation of the features of the claim, which was not already mentioned in the appellant's statement of grounds. …

Nor can the Board follow the respondent's argument that the objections based on D2 were already in the proceedings since D2 was mentioned in the notice of opposition.

According to the established case law of the Boards of Appeal the appeal proceedings are wholly separate and independent from the proceedings at first instance. This means that the respondent cannot assume that arguments submitted during the proceedings before the opposition division are part of the appeal proceedings.

For this reason the respondent should have presented "the complete case" and should have specified "expressly all the facts, arguments and evidence" in its letter of reply which could challenge the patent even if the first instance decision and consequently the statement of grounds of appeal are not concerned with some of these arguments.”

“3.3 Further, the Board considers that the submissions based on D2 represent a fresh case presented at a late stage of the appeal proceedings which would require a substantially different discussion as compared to the case based on D4.

In particular, when evaluating novelty and inventive step, the Board would be faced for the first time with the technical content of D2 and the related questions such as for example …”

3.10 The Enlarged Board cannot see anything “unreasonable” in the aforementioned reasoning of the Board, nor is there any contradiction of either the Board’s preliminary opinion or the course of the written and oral proceedings before the Board.

Since the Board’s preliminary opinion did not mention a claim interpretation or a technical effect of feature f) of claim 1 that had not been submitted by the patent proprietor in their statement setting out the grounds of appeal (cf. pages 7 to 12), the petitioner was by no means obliged to wait until the Board had issued a preliminary opinion assessing the patent proprietor’s submission as to why the opposition division had been wrong to find that the claimed subject-matter lacked novelty over the disclosure of D4. The fact that the Board in its preliminary opinion indicated to follow the patent proprietor in their argumentation cannot justify a new line of argument based on a different document (D2) in reaction to that preliminary opinion.

In this respect, the Enlarged Board notes that the petitioner did not submit circumstances justifying why it had not introduced their line of argument based on D2 for lack of novelty and inventive step of the claimed subject-matter already with their reply to the patent proprietor’s statement setting out the grounds of appeal. Indeed, the preliminary opinion of the opposition division that D2 was not novelty-destroying (cf. point 6.1 of the annex to the summons to oral proceedings), should have prompted the petitioner to include this issue into their reply letter in an attempt to present their complete case within the meaning of Article 12(2) RPBA.

As to the complexity and delaying effect of the petitioner’s new line of argument, the Enlarged Board is satisfied with the detailed reasons given by the Board in point 3.3 of the Reasons of the decision under review.

3.11 Hence, the decision of the Board not to admit into the appeal proceedings D2 and the new line of argument based on this document for lack of novelty and inventive step does not appear so unreasonable as to lead to assume an abuse of discretionary power by the Board.

3.12 In so far as the petitioner argues that the Board in its preliminary opinion, adopted a new, surprising interpretation of the teaching of D4 that had not been discussed by the parties or the opposition division before, and that the situation was comparable to the case underlining decision R 3/15 (not published in the OJ EPO), the Enlarged Board cannot follow this somewhat different and new line of argument.

As explicitly confirmed by the petitioner, the Board did mention its allegedly new understanding of the teaching of D4 in its preliminary opinion on which the parties could comment. And the petitioner had indeed done so with letter of 8 February 2017 and at the oral proceedings. Hence, the petitioner could by no means have been surprised by the Board’s reading of document D4. And since on an objective basis the petitioner could not have been surprised by the Board’s view, on which the petitioner had had an opportunity to comment and on which they had indeed commented, the petitioner could have been taken only by a “subjective” surprise. Such a mere subjective surprise in itself, however, does not imply that the petitioner’s right to be heard had been violated (cf. R 5/16, not published in the OJ EPO, Reasons, point 19).

Therefore, for this very reason the petitioner cannot now claim a violation of Article 113(1) EPC.

3.13 Moreover, there is no doubt that the petitioner had the opportunity to state their case in respect of all the issues on which the decision under review was taken in respect of the late-filed document and new line of argument.

Considering that the petitioner was legally represented and, therefore, should have been familiar with the procedural framework of the appeal proceedings, the petitioner was in a position to defend their rights both as to the procedural and as to the substantive law at all stages of the proceedings. And the petitioner did so as evidenced by the discussion during the oral proceedings before the Board and by their objection under Rule 106 EPC, which was discussed at the oral proceedings as well.

After all, the petitioner had not been prevented from submitting all documents and arguments it wished to bring to the Board's attention. The fact that the Board did not admit into the appeal proceedings D2 and the line of arguments based on it cannot be qualified as a formal denial of the petitioner’s right to be heard.

Consequently, there is no basis for assuming that the petitioner did not have sufficient opportunity to comment exhaustively on all aspects on which the decision was taken. Thus, no violation of Article 113(1) EPC was committed by the Board.

3.14 Investigating any further would involve a review of the decision under review on the merits. The mere fact that the petitioner does not share the view of the Board and does not accept the outcome of the decision under review cannot justify further elaborating on this because it would necessitate assessing whether the Board had correctly understood the argumentation submitted by the parties to the appeal proceedings and, above all, given the right answer to it. Such a review of the merits of the decision of the Board would be beyond the scope of the petition for review proceedings as a specific and limited means of redress provided for in the EPC.

3.15 For the aforementioned reasons, as far as the petition for review is not clearly inadmissible, it is clearly unallowable.

4. Conclusion

The petition for review, therefore, is in part clearly inadmissible (in respect of complaints (2) to (4)) and in part clearly unallowable (concerning complaint (1)).