4.2.2 Witness testimony and written statements
The scope of the boards' competence in this regard has been expressly discussed in a number of recent decisions, for example T 1418/17 (see below), from which the board in the more recent T 1604/16 diverged, holding that boards had the power to review contested decisions in full, including not only the points of law but also the facts.
The board in T 2565/11 overturned the evaluation of evidence made by the department of first instance because the opposition division erred as regards the underlying facts and failed to give an evaluation that was free of contradictions. The board gave its own evaluation of the evidence regarding the relevant facts. The board also noted that further explanations given by a witness, in order to close a potential gap in the documentary evidence on file, could not be considered per se as new facts. Otherwise, hearing a witness would be meaningless, and evidence provided on the basis of documents would be given a higher evidentiary value than a witness testimony, for which no basis could be found in the EPC. T 2565/11 is cited in T 2398/12 in the context of an object submitted as evidence in support of an allegation of public prior use which had gone missing during the appeal but had already been examined by the opposition division.
The board in T 1476/14 held there was no ground in the case in hand to overturn the opposition division's assessment of the testimony of two witnesses. The credibility of witnesses cannot be impugned because of differences in testimonies relating not to the essentials but to less important aspects of prior use.
In T 1798/14 the opposition division had considered the witness reliable and his answers detailed, credible and consistent overall. The respondent (patent proprietor) had not voiced any concerns either; it had merely disputed that the machine witnesses may have seen comprised all the features of the claim. The board saw no reason to depart from this assessment and to doubt the accuracy of the witness's statements. In T 544/14 the question of evaluating the evidence was again discussed in detail by the board (re-hearing the witness necessary but eventually not decisive – alleged public prior use not novelty-destroying).
According to the board in T 621/14 appeal proceedings were not intended as a second opportunity to have evidence heard unless sufficiently substantiated grounds for appeal gave some reason for it. The mere desire for evidence to be evaluated differently did not result in a re-opening before the board of the procedure for taking evidence. The board saw no reason to deviate from the prior art identified by the opposition division through the hearing of witnesses.
In T 1107/12 the board pointed out that the opposition division's evaluation of the testimony had left it in no doubt as to its reliability or the witness's credibility as a person. Its evaluation of the evidence was not otherwise vitiated by any error in law. It was based on the right criteria, could be followed in all respects and did not contain any logical mistakes. It was therefore not open to the board to overrule its findings and re-evaluate the evidence in its place.
In T 804/92 (OJ 1994, 862) the opposition division had, in a communication to the parties, suggested in detail the content of a statement under oath. Such a practice was firmly rejected by the board because it involved the risk of leading witnesses and could seriously undermine the probative value of such statements. This applied to departments at any instance in proceedings before the EPO.
In T 1418/17 the board established that all the relevant arguments by the parties regarding both prior uses (sale/exhibition) had already been put forward and taken into account in the proceedings at first instance. With regard to the relevant facts established by the opposition division, the board observed that it was generally accepted that the principle of free evaluation of evidence applied before the EPO (G 3/97, G 1/12), which also had to have an impact on the review during the appeal proceedings (T 1107/12, T 621/14). Provided that there had not been an error in the application of the law (e.g. an incorrect standard of proof had been applied), a board of appeal should therefore only overrule the evaluation of evidence made by a department of first instance and replace it with its own if that department's evaluation of the evidence clearly had one of the following shortcomings: (i) essential points had not been considered (T 1553/07), (ii) irrelevant matters had been taken into consideration (T 2565/11) or (iii) the laws of thought had been violated, for instance in the form of errors in logic and inconsistencies in the reasoning (T 2565/11). In the case in hand the board considered that the opposition division's evaluation of evidence was not open to objection. Unlike the opposition division, however, the board was of the opinion that public prior use at trade fairs was novelty-destroying.
T 1418/17 has to date been cited by three decisions. Decision T 1057/15 referred to the principles laid down in the second catchword of T 1418/17 and endorsed the opposition division's evaluation of the evidence and facts in the case in hand; decision T 41/19 endorsed the basic principle stated in T 1418/17. And T 1604/16 did not follow T 1418/17 and considered that the boards have competence to review appealed decisions in full, including points of law and fact. Decision T 1069/14 endorsed decision T 1604/16.
In T 1604/16, the invention related to a foldable ramp for loading a wheelchair into a vehicle. The opposition division had based its assessment on E1, E1/1 (with photographs) and the testimony given by a witness (buyer of the vehicle equipped with the ramp). The evidence adduced before the board included documents E1, E1/1 and the minutes of the hearing of the witness at first instance. There were no issues in terms of the witness's credibility (see in general T 474/04). In the board's view, the principle of the free evaluation of evidence has no direct bearing on the extent of the boards' competence to review decisions. The board referred to the explanatory remarks to Art. 12(2) RPBA 2020 that the boards have competence to review appealed decisions in full, including points of law and fact. The board was aware that there is case law on a restriction of the boards' competence when reviewing discretionary decisions and did not consider the evaluation of evidence to be a discretionary decision. The board did not see any reason why it should limit its review of the opposition division's findings of fact in the context of the public prior use by applying the criteria set out in decision T 1418/17. In the case in hand, in view of several remaining doubts which arose from the content of the minutes, the board held that the evidence produced was insufficient and hence that the opposition division had erred in concluding that the ramp shown in E1/1 formed part of the prior art. See also chapter V.A.3.2.1. "Primary object of the appeal proceedings – Article 12(2) RPBA 2020".
- T 42/19
Catchword:
1. A boards' power to review appealed decisions is not limited to points of law but extends to points of facts (in agreement with T 1604/16). 2. However, it is settled case law that a board is not obliged to take all the evidence anew and that parties do not have the right to have the taking of evidence repeated at their request before the board. 3. The principle of free evaluation of evidence, meaning that there are no firm rules on the probative value of the various types of evidence but that the deciding body is entrusted with weighing up all the evidence and basing its decision on what it is then satisfied has been established, implies a degree of freedom comparable to the one referred to by the Enlarged Board of Appeal in decision G 7/93, Reasons 2.6. 4. Thus, it is wise to similarly respect this freedom, especially when taking into account that a board, except when only reviewing documentary evidence, does not have the same first-hand impression of the probative value of a means of evidence as a department of first instance that has itself heard a witness or expert or inspected an object. 5. Although the Board is not limited in its decision, it normally seems useful to apply the test set out in decision T 1418/17, Reasons 1.3: Unless the law has been misapplied (e.g. application of the wrong standard of proof), a board of appeal should overrule a department of first instance's evaluation of evidence and replace it with its own only if it is apparent from that department's evaluation that it: (i) disregarded essential points, (ii) also considered irrelevant matters or (iii) violated the laws of thought, for instance in the form of logical errors and contradictions in its reasoning. 6. The evaluation of evidence only refers to establishing whether an alleged fact has been proven to the satisfaction of the deciding body. The discretion-like freedom is restricted to this question and does not extend to the further question of how the established facts are to be interpreted and what the legal consequences are. (see Reasons 3.2 to 3.6).