R 0003/20 02-09-2021

1. The divergent meanings attributed to the requests filed in the oral proceedings held before the Board

1.1 The minutes of those proceedings

They read (on pages 2-3):

After a break for deliberation by the board, the chairman expressed the view of the board that the subject-matter of claim 1 of the main request was not novel over the disclosure of document D2.

...The respondent then requested a short break for considering its requests, which was allowed. Next the respondent submitted a first to sixth auxiliary request to replace the auxiliary requests on file. ... [last full paragraph on page 2/4]

The parties were heard on admissibility of the thus corrected auxiliary requests... . The appellant objected to the admission of the auxiliary requests and requested to postpone the proceedings in order to have the opportunity to discuss the case with his client or that the case be remitted to the opposition division in case the board would allow the auxiliary requests into the proceedings. The respondent agreed to this latter request.

After a break for deliberation by the board, the chairman stated that the board had decided to not admit the new auxiliary requests into the proceedings.

1.2 Petitioner's request for correction of the minutes

By letter of 2 December 2019, the petitioner requested correction of the minutes since they were deemed not to fulfil the requirements of Rule 124 EPC. It stated verbatim:

In particular, they show deficiencies with regard to the aspects mentioned, i.e. essential submissions and similarly important procedural statements are missing and incorrectly reflected in the minute.

Substantially, it is noticed that:

• The first to sixth auxiliary requests were filed on June 27, 2019, in reply to a negative preliminary assessment of the Board of Appeal which surprised the Patent Proprietor;

• The Proprietor merely required a correction of such filed auxiliary request because of an essential term (prevention) was interpreted in an incorrect way during the novelty discussion preceding the request of the correction of the auxiliary request.

Indeed, the Proprietor asked for a correction during the proceedings based on the above interpretation and on the original Italian text of the filed application.

• Moreover, the correction reported into the minutes was caused by a typographical error and requested by the Board of Appeal, i.e. it was not a Patent Proprietor request, as it seems from the minutes.

Accordingly, the last full paragraph of page 2/4 of the minutes should be re-phrased to recite

"Next the respondent submitted a request of correction of the auxiliary requests on file in view of the preceding novelty discussion. ...

1.3 Communication in response to the correction request of 17 December 2021

In that communication the Board stated (in point 2):

"The request for correction of the minutes is based on the allegation that the respondent merely requested a correction of the auxiliary requests on file.

According to the recollection of the board and the notes made during the oral proceedings the respondent delivered by hand at 11:02 hrs to the Board auxiliary requests 1 to 6 (12 sheets of paper, signed by the respondent's representative). The respondent submitted that these new requests shall replace the auxiliary requests on file.

This is what is stated in the minutes of the oral proceedings by "Next the respondent submitted a first to sixth auxiliary request to replace the auxiliary requests on file."

1.4 The assessment of the Enlarged Board

In its petition, the reply to the Enlarged Board's communication and the oral proceedings before the Enlarged Board the petitioner maintained its view that the minutes were incorrect, in particular because a correction of the auxiliary requests filed before the oral proceedings before the Board on 27 June 2019 was requested, i.e. that the earlier requests were not replaced by the latter requests.

The Enlarged Board notes that the petitioner does not deny having "delivered by hand… to the Board auxiliary requests 1 to 6 (12 sheets of paper, signed by the respondent's representative)." These sheets of paper, which are signed and dated, are attached to the minutes of the oral proceedings before the Board and part of the public file.

In the petitioner's view, however, these requests constitute a "correction" of the pending auxiliary requests and not new auxiliary requests, with "correction" meaning bringing the translation in conformity with the application as filed pursuant to Article 14(2) EPC.

In the Enlarged Board's opinion the question of whether the auxiliary requests filed during the oral proceedings are mere "corrections" in this meaning or new requests replacing the previously filed auxiliary requests is a question of substantive law. It must therefore remain an open one when it comes to assessing whether or not the petitioner raised objections within the meaning of Rule 106 EPC in respect of all three grounds for the petition relating to procedural defects mentioned in point V above.

All three grounds relate to the question whether the sheets of paper filed during the oral proceedings before the Board are to be treated as new requests or as "corrections" of the pending requests pursuant to Article 14(2) EPC.

According to the first ground the petitioner was not heard on this issue, under the second ground, the Board assessed the wrong version of the requests, i.e. not the version filed before the oral proceedings as corrected, but requests that the Board considered to be new, and under the third ground, the Board did not deal with the request for correction underlying the contents of the sheets of paper filed during the oral proceedings.

Given that the three grounds are thus closely linked, the Enlarged Board will assess compliance with Rule 106 EPC for all three grounds jointly.

2. Admissibility of the petition

2.1 General aspects

The petitioner is adversely affected by the decision under review, and the petition for review was filed, and the corresponding fee paid, within the prescribed time limit and in the prescribed form in accordance with Article 112a(4), second sentence, EPC and Rule 107 EPC. The petition is based on Article 113(1) EPC, corresponding to the ground for review of Article 112a(2)(c) EPC, and Rule 104(b) EPC adopted on the basis of Article 112a(2)(d) EPC.

2.2 Duty to raise an objection

2.2.1 Rule 106 EPC: interpretation of the term "objection" and evidence of an objection in the case law

Rule 106 EPC provides:

A petition under Article 112a, paragraph 2(a) to (d), 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.

The purpose of this rule is "to give the board a chance to react immediately and appropriately by either removing the cause of the objection or by dismissing it". See the EPO publication "Case Law of the Boards of Appeal of the EPO", 9th edition 2019, hereinafter referred to as "Case Law", at point V.B.3.6.1 and the decisions cited there.

An overview of the case law of the Enlarged Board of Appeal on the requirements of a valid objection is set out in the "Case Law" at point V.B.3.6.2. Sub-paragraph (a) is entitled "Recognisable immediately as an objection, defect clear and unambiguous". It reads as follows:

Raising an objection under R. 106 EPC is a procedural act and a precondition for access to the extraordinary legal remedy under Art. 112a EPC (R 4/08, R 7/08, R 3/11, R 7/11, R 16/12). The objection must be expressed by the party in such a form that the board is able to recognise immediately and without doubt that an objection under R. 106 EPC is intended. It also must be specific, indicating clearly and unambiguously on which procedural defect the petitioner intends to rely (see R 4/08, R 7/08, R 8/08, R 1/10, R 17/10, R 7/11, R 5/12, R 6/12, R 16/12: established jurisprudence, R 3/14, R 8/16).

An objection under R. 106 EPC is additional to and distinct from other statements, such as arguing or even protesting against the conduct of the proceedings or against an individual procedural finding (R 2/08, R 7/08, R 9/09, R 1/10, R 14/11, R 21/11, R 16/12). An objection must be expressly described as such (R 8/08, R 21/11). However, even if an objection does not contain an explicit reference to R. 106 EPC, it can qualify as an objection under R. 106 (R 21/09; see also R 17/14, R 12/14).

Point V.B.3.6.4 deals with "Minutes as evidence that the objection was raised":

The test whether an objection was validly raised during oral proceedings is normally the minutes which, as prescribed by R. 124(1) EPC, must contain the relevant statements of the parties (R 4/08, R 17/10, R 8/16). The absence in the minutes of an objection under R. 106 EPC and of any request for correction of the minutes is a strong indication that such an objection, if any, was at least not duly qualified (R 3/11; see also R 5/14, R 6/13, R 3/14).

In R 7/11 the Enlarged Board noted that unless duly corrected, the minutes of the oral proceedings authenticate the facts they relate to, and in R 2/12 of 17 October 2012 the Enlarged Board stated that If a party is really convinced that a violation of its right to be heard has occurred during the oral proceedings the subsequent objection must be clearly raised as such, so that it will oblige the board of appeal to react, and require this to be recorded in the minutes in accordance with R. 124 EPC.

In R 8/17 the board stated that the petitioner's own submissions did not allow the conclusion that it had raised an objection in the oral proceedings which could qualify as an objection under R. 106 EPC and if the petitioner had considered the minutes to be incomplete in this regard, one would have expected it to submit a corresponding request for correction (see R 17/10).

2.2.2 Application of the above case law on Rule 106 EPC to this case

(a) The petitioner's submissions

The Enlarged Board understands the petitioner's submissions made in the petition to the effect that the petition is supposed to comply with Rule 106 EPC due to the fact that both the petitioner and opponent 2 raised and addressed procedural defects pertaining to a correction under Article 14(2) EPC in the course of the oral proceedings before the Board (see point II.(b) above). The excerpts from the decision under review quoted to establish this assertion relate to arguments of the petitioner and opponent 2 put forward in the context of the second ground for petition (Article 113(2) EPC). The arguments are in respect of auxiliary requests 1 to 6 filed during those oral proceedings.

The excerpt relating to the petitioner's arguments consists of two paragraphs quoted on page 5 of the petition. This excerpt is entitled by the petitioner as "[Patent Proprietor arguments in favour of the Request]". Referring to Article 14(2) EPC it is stated in the quotation that, in the proceedings before the opposition division already, the petitioner had pointed out that in the originally filed Italian application the term "inibizione" had been used. In the petitioner's view, the replacement of "prevention" by "inhibition" was correct. It was also justified to make the corresponding amendments during the oral proceedings, because it was the discussion in those proceedings only which made the understanding of the verb "to prevent" clear.

The excerpt from the decision under review relating to the arguments of opponent 2 consists of the paragraph quoted at the top of page 5 of the petition. This paragraph is entitled by the petitioner as "[Opponent arguments against the Patent Proprietor Request]" and sets forth why the auxiliary requests filed during the oral proceedings before the Board should not be admitted.

In its reply to the Enlarged Board's communication attached to the summons to oral proceedings and in those proceedings, the petitioner complemented its submissions regarding the application of Rule 106 EPC as set out above, in point IV with a view to rebutting the Board's adverse opinion. The petitioner made several assertions to establish that it had raised an objection under Rule 106 EPC:

- it quoted Article 14(2) EPC throughout the proceedings, the Board asked the petitioner twice for the legal basis for the mentioned Art. 14(2) correction request and the Board adjourned the oral proceedings for three hours.

- The petitioner requested remittal of the case to the opposition division

- The petitioner requested correction of the minutes of the oral proceedings before the Board.

- Certain decisions in review proceedings supported its case.

(b) Analysis

- Objection in respect of the procedural defect

Pursuant to Rule 106 EPC an "objection in respect of the procedural defect" must be raised. This means that in the present case objections would have had to be raised in respect of all three asserted violations (see point 1 above) that were all allegedly caused by one and the same fact, i.e. the non-admittance of auxiliary requests 1 to 6 to the appeal proceedings. In so doing, the Board allegedly did not allow the request under Article 14(2) EPC even though it should have considered this request to be a priori allowable.

- The excerpts quoted in the petition (at page 5)

The Enlarged Board is unable to glean from the submissions by the petitioner and opponent 2 in the context of the second ground for petition only (violation of Article 113(2) EPC) that the representative of the petitioner or opponent 2 raised an objection within the meaning of Rule 106 EPC as interpreted by the case law reproduced above (in point 2.2.1) in the oral proceedings before the Board. It should be recalled that the case law laid down the criterion that the "objection must be expressed by the party in such a form that the board is able to recognise immediately and without doubt that an objection under R. 106 EPC is intended". The excerpts quoted by the petitioner do not qualify as objections, because they do not meet this criterion.

The excerpt relating to the petitioner in support of its assertion of an objection having been raised (entitled "[Patent Proprietor arguments in favour of the Request]") does not include any criticism of the Board's way of conducting the oral proceedings, let alone does it use the term "objection". Rather, it explains the petitioner's position regarding the application of Article 14(2) EPC to the facts of the present case. More specifically, the excerpt mentions no violation of the right to be heard (Article 113(1) EPC), the duty to examine and decide only upon a text which corresponded to the text submitted to the EPO (Article 113(2) EPC) or of the Board's failure to decide on a request relevant to the decision (Rule 104(b) EPC), i.e. the three violations alleged to have taken place in the course of the oral proceedings.

No such violations can be inferred from the excerpt by implication, either. While it is not necessary to use the term "objection", a ground for a petition for review an objection must be "specific, indicating clearly and unambiguously on which procedural defect the petitioner intends to rely" (see above, point 2.2.1). This may be the case, for instance, where a violation of the right to be heard is asserted clearly, as in case R 21/09 (Reasons, point 1.4) or R 12/14 (Reasons, point 9). The excerpt, however, does not mention any violation of Article 113(1,2) or Rule 104(b) EPC, but essentially explains why the board should accept the replacement of the term "prevention" by "inhibition" that the petitioner sought in the oral proceedings. Such mention would not have been possible anyway, i.e. the excerpt could not mention any such violation, because it deals with the petitioner's submissions before the Board had announced its position on admittance of the auxiliary requests filed during the oral proceedings, implying that it did not accept the petitioner's stance regarding the application of Article 14(2) EPC in the present case. The two asserted violations however obviously relate to that announced position. Submissions made before the announcement cannot logically constitute an objection to the later position.

Analogous considerations apply to the excerpt relating to opponent 2 quoted at the top of page 5 of the petition (entitled "[Opponent arguments against the Patent Proprietor Request]") on which the petitioner also relied to establish that an objection under Rule 106 EPC was made. The question of whether an objection filed by a party other than the petitioner could qualify as an objection under Rule 106 EPC therefore need not be answered.

Against the above backdrop, the Enlarged Board is unable to discern how the Board could have been alerted to a possible violation of Article 113(1,2) or Rule 104(b) EPC on the basis of the submissions made by the petitioner and opponent 2 in the oral proceedings before the Board quoted in the excerpts, and thus, how the purpose of Rule 106 EPC could have been fulfilled by those submissions. As stated above, that purpose is "to give the board a chance to react immediately and appropriately by either removing the cause of the objection or by dismissing it".

- The submissions made in reply to the Enlarged Board's communication and the in the course of the oral proceedings before the Enlarged Board.

Nor do the points raised in the reply to the Enlarged Board's communication or in the oral proceedings lead the Enlarged Board (see above, points IV and V, respectively) to arriving at a different conclusion.

Objection under Article 14(2) EPC raised "throughout the proceedings"

The Enlarged Board has difficulty in ascertaining from the file at which point in time the petitioner, apart from expressing its position before the Board had announced its opinion on the auxiliary requests filed during the oral proceedings, raised this point again. In the oral proceedings before the Enlarged Board the petitioner asserted that it did so after that announcement. Yet there is no reflection thereof in the minutes.

In any case, no matter what the petitioner's assertion that it quoted Article 14(2) EPC throughout the proceedings might amount to, such repeated quotation or objection to the Board's alleged incorrect interpretation of that provision is immaterial in the context of Rule 106 EPC. Under that rule, an objection must be raised against a procedural defect. Not allowing the petitioner's request for correction under Article 14(2) EPC and instead treating the auxiliary requests filed during the oral proceedings before the Board as amendments would, if incorrect, amount to an infringement of substantive, not procedural law, and could thus not constitute a procedural defect in the meaning of Rule 106 EPC.

It must also be noted that a petitioner asserting having raised an objection for violation of the right to be heard on a certain issue in oral proceedings, while at the same time laying out extensively that it discussed that very issue with the board, is contradicting itself. In other words: a petitioner setting out how it had explained its position to the Board cannot be heard with a claim that it had objected to not being heard on that very point in oral proceedings.

Consequently, the Enlarged Board is unable to see how "the citation of Article 14(2) EPC through all the proceedings" should immediately read a violation of the right to be heard of the Petitioner and a procedural defect." (See middle of page 2 of the reply.)

Furthermore, it is not intelligible how the assertions that

- the Board asked the petitioner twice for the legal basis for the mentioned Article 14(2) EPC correction request and

- the Board adjourned the oral proceedings for three hours

could qualify as indications of objection under Rule 106, let alone fulfil the strict criteria established by the case law (see above, point 2.2).

The first assertion relates to a question by the Board, not a comment by the petitioner to the Board. The second assertion is mere conjecture implying that a Board deliberated on the issue of a procedural defect raised, while there is no indication that the petitioner raised such defect. Apart from that, it is not for the Enlarged Board to speculate about the reasons for the Board's above question or the three-hour break.

Remittal

The petitioner's agreement to a possible remittal of the case to the opposition division for further prosecution again is unconnected with the raising of a procedural defect under Rule 106 EPC. Remittal is one of the two options provided by Article 111(1) EPC in case the Board finds an appeal to be allowable.

The minutes of the oral proceedings

Nor can the Enlarged Board identify any objection having been raised by the petitioner in accordance with Rule 106 EPC from the plain text of the minutes of the oral proceedings held before the Board, or by implication from those minutes.

According to the pertinent part of the minutes of the oral proceedings,

... the respondent submitted a first to sixth auxiliary request to replace the auxiliary requests on file. In the course of the discussion the respondent corrected the third and the sixth auxiliary request.

The parties were heard on admissibility of the thus corrected auxiliary requests (annex). The appellant objected to the admission of the auxiliary requests and requested to postpone the proceedings in order to have the opportunity to discuss the case with his client or that the case be remitted to the opposition division in case the board would allow the auxiliary requests into the proceedings. The respondent agreed to this latter request.

After a break for deliberation by the board, the chairman stated that the board had decided to not admit the new auxiliary requests into the proceedings.

The appellant was then heard on the request for reimbursement of the appeal fee. The respondent stated it had no comments on this request.

The parties were asked to confirm their final requests.

The appellant requested that the decision under appeal be set aside, that the patent be revoked and that the appeal fee be reimbursed.

The respondent requested that the appeal be dismissed or, alternatively, that the patent be maintained on the basis of the set of claims of one of the first to sixth auxiliary requests, filed during the oral proceedings of 10 July 2019 or, further alternatively, that the case be remitted to the opposition division for further prosecution.

The chairman asked the parties if they had any further observations or requests. There were none.

The chairman then declared the debate closed.

(Emphases added.)

The request for correction of the minutes, which the Board refused, is immaterial in this respect. It was intended to clarify that the petitioner had made a request under Article 14(2) EPC. It did not criticise the minutes, neither expressly nor by implication, for having failed to include an objection made under Rule 106 EPC.

The petitioner's additional submissions regarding the request for correction of the minutes made in the reply to the Enlarged Board's communication and during the oral proceedings before the Enlarged Board are equally unconvincing. They do not establish that an objection in the meaning of Rule 106 EPC was raised during the hearing. Objections asserted to have been raised in the correction request would be belated and relying on them therefore has no purpose.

Apart from the request to replace the phrase "submitted a first to sixth auxiliary request" by "submitted a request for correction of the auxiliary requests", the request for correction is unspecific: it is not clear what parts of the minutes are supposed to be corrected to bring out an objection under Rule 106 EPC. This is shown clearly by the petitioner's submissions in the reply to the Enlarged Board's communication. The Enlarged Board is at a loss to understand how the Board, on the basis of general terms used in the reply, such as

- Deficiencies

- Important missing procedural statements

- Incorrect reflections

- Incorrect compliance of what really happened during the Oral Proceedings

could have been alerted to a specific procedural defect of the kind relied on, i.e. a violation of Article 113(1,2) or Rule 104(b) EPC, in order to reconsider a stance taken.

The further assertion that an objection under Rule 106 EPC was made in the request for correction of the minutes of the oral proceedings is beside the point, because the Board had already pronounced the order of its decision at the end of those proceedings. The request for correction of the minutes can only relate to what was said in the past, during the oral proceedings.

Decisions in review cases

The decisions in review cases under Article 112a EPC that the petitioner cited in the oral proceedings before the Enlarged Board are not to the point either:

- R 9/11: According to the petitioner, it was held in this decision that the board of appeal did not have discretion in disregarding request for correction. As the chairman stated in the oral proceedings before the Enlarged Board, case R 9/11 relates to substantive issues.

- R 21/09 : The respondent did not mention Rule 106 EPC. Nevertheless, the objection was clearly raised and entered in the minutes relating to a specific procedural defect (« ... l'objection clairement soulevée et notée au procès verbal de la chambre de recours, portant sur un vice de procédure précis ...»). The facts of the present case are clearly different, as extensively laid out above.

- Objection could have been raised during the oral proceedings

Pursuant to Rule 106 EPC, an objection is a requirement for admissibility of a petition "except where such objection could not be raised during the appeal proceedings".

The Enlarged Board is of the opinion that this exception does not apply in this case. An objection could have been raised in the course of the oral proceedings. The right point in time would have been after a break for deliberation by the Board, when the chairman stated that the Board had decided to not admit the new auxiliary requests into the proceedings. This statement made it clear that the Board did not accept the view obviously held by the petitioner that amendments made to claim requests pursuant to Article 14(2) EPC were valid independent of admittance of these requests into the proceedings under procedural rules, such as Article 13(1) RPBA 2007 in the present case.

If the petitioner's representative had thought that, in addition to the arguments that he had provided in the oral proceedings as summarised in the above excerpt, the petitioner should also have been afforded an opportunity to reply to the Board's interpretation of Article 14(2) EPC, then he should have raised objections in relation to the three asserted violations, as they all relate to Article 14(2) EPC.

The petitioner's representative should in any case have raised an objection before the closure of the debate, at the latest in reply to the chairman's question whether the parties had any further observations or requests. "Decisions" announced in the course of oral proceedings before a board on specific points are not final and, in principle, subject to reconsideration before the final decision is pronounced as order at the end of the oral proceedings (see R 5/19, point I.2.2 of the Reasons).

In the petition, the petitioner refers to the reasons for the decision under review several times, but does not claim that they were surprising and does not allege an additional and separate violation of Article 113(1) EPC based on those reasons. More precisely, the petitioner criticises point 3.4 providing the reasons for non-admittance of the auxiliary requests filed during the oral proceedings and thus the non-acceptance of the petitioner's interpretation of Article 14(2) EPC. As stated, this conclusion followed clearly already from the announcement of non-admittance in the oral proceedings, and an objection could have been filed from that announcement and before the closure of the debate. There is thus no reason for the Enlarged Board to consider of its own motion that an objection could not have been filed in relation to the reasons of the decision, so that insofar Rule 106 EPC did not apply.

This finding cannot be called into question by the petitioner's assertions made for the first time in its reply to the Enlarged Board's communication (on page 2). The petitioner argued that an objection was raised in the meaning of R 4/08 (point 1 of the Reasons): the requirement pursuant to Rule 106 EPC was fulfilled in so far as the petitioner might be understood as implicitly asserting a fundamental violation of Article 113(1) EPC by alleging that the reasons given in the written decision for the admission of the proprietor's auxiliary requests had not been discussed during the oral proceedings "since the Petitioner was not satisfied by the decision of the Board of Appeal to deny the request under Art. 14(2) EPC." The Enlarged Board assumes that the alleged implicit assertion in respect of the reasons given in the written decision was made in the petition and not in the oral proceedings when those written reasons were not available.

In this respect it is noted, first, that the Board did not admit the auxiliary requests. Second, according to the minutes as reproduced in pertinent part above, the parties were heard on "admissibility of the thus corrected auxiliary requests". The petitioner did not explain in which respect the reasons given in the written decision were not discussed during the oral proceedings. The Enlarged Board is therefore unable to assess this assertion.

2.3 Conclusion

The petition must be rejected as clearly inadmissible (Rule 109(2)(a) EPC) due to the petitioner's failure to raise an objection pursuant to Rule 106 EPC in respect of the three asserted procedural defects under Article 112a(2)(c), (d) EPC in conjunction with Rule 104(b) EPC.

3. The remaining requests

The remaining requests that

- the proceedings before the Technical Board of Appeal be reopened;

- the members of the Board who participated in the decision be replaced; and

- the fee for the petition for review be reimbursed

must equally be refused. Since the petition is clearly inadmissible, the Enlarged Board cannot order reopening of the proceedings before Technical Board of Appeal 3.2.01 under Rule 108(3) EPC and replacement of the members who participated in the decision. Reimbursement of the petition fee cannot be ordered because the condition of Rule 110 EPC that the proceedings before the Board are reopened has not been met.