BOARD OF APPEAL AND ENLARGED BOARD OF APPEAL CASE LAW 2020
III. RULES COMMON TO ALL PROCEEDINGS BEFORE THE EPO
A. Right to be heard
1. The right to be heard in oral proceedings
(CLB, III.B.2.6.)
In T 1414/18 the board held that a statement such as "the next procedural step will be summons to oral proceedings during which the application will be refused" made prior to a final decision to refuse a patent application may infringe a party's right to be heard and thus may lead to a substantial procedural violation. The phrase "will be refused" – on an objective basis – implied that, regardless of any facts or arguments the applicant could potentially have brought forward thenceforth, the application was finally to be refused under Art. 97(2) EPC. Such a conduct of the proceedings was contrary to the very aim and purpose of the right to be heard under Art. 113(1) EPC, according to which decisions of the EPO organs like a decision of an examining division to eventually refuse a patent application may only be based on grounds or evidence on which a party had indeed an opportunity to present their comments. The board found there to be a causal link between the above substantial procedural violation and the necessity of filing an appeal against the examining division's decision and found the reimbursement of the appeal fee to be equitable. It ordered remittal to the examining division for further prosecution (Art. 111(1) EPC).
B. Oral proceedings
1. Oral proceedings held by videoconference
(CLB, III.C.7.3.)
In the communications concerning oral proceedings before the boards of appeal entitled "Restrictions due to the coronavirus (COVID-19) pandemic and introduction of video-conferencing technology in appeal proceedings", published on the website of the Boards of Appeal on 6 May, 15 May, 25 May 2020 etc. the Boards of Appeal informed the public of the possibility of conducting oral proceedings before the board using videoconferencing technology, which, however, would require agreement from all parties. According to new Art. 15a RPBA 2020, which entered into force on 1 April 2021, the boards may conduct oral proceedings by videoconference. The agreement of the parties is not required. See also the communications from the Boards of Appeal of 15 December 2020 and 24 March 2021, and the referral to the Enlarged Board of Appeal pending under ref. No. G 1/21.
In T 1378/16 the oral proceedings that took place on 8 May 2020 were the first held by videoconference (ViCo) in the history of the boards of the appeal. Unlike some national legal systems, the EPC does not stipulate explicitly the form(s) in which oral proceedings under Art. 116 EPC are to take place. For these reasons, the board considered it appropriate to address briefly the legal basis for oral proceedings within the meaning of Art. 116 EPC. It reasoned as follows: In the past, the boards have rejected requests for oral proceedings to be held by videoconference, mainly on the grounds that there was no "general framework" to this effect. In particular, no provision was made for suitable ViCo rooms and for the public to attend such ViCo-based hearings (see e.g. T 1266/07, T 2068/14). At the same time, the boards have held that Art. 116 EPC does not mandate oral proceedings taking place with the physical presence of the parties. As pointed out in T 2068/14, "while a video conference does not allow such direct communication as the face-to-face meeting involved in conventional oral proceedings, it nevertheless contains the essence of oral proceedings, namely that the board and the parties/representatives can communicate with each other simultaneously". Hence, several boards have considered that it was within their discretion to decide whether or not to select this form for the parties' oral submissions (T 2068/14, T 195/14, T 932/16). The present board agreed with this interpretation of the legal framework. Hence, oral proceedings held by ViCo are not excluded by the EPC and fulfil the requirements for holding oral proceedings within the meaning of Art. 116 EPC. The EPC only requires that the public character of the proceedings be ensured (Art. 116(4) EPC). The form in which the parties orally present their arguments – with or without physical presence – is not predetermined by Art. 116 EPC. Indeed, and in contrast to the circumstances under which the decisions mentioned above were issued, the boards of appeal now have at their disposal suitable rooms at their premises for ViCo-based hearings. Furthermore, appropriate provisions have been made for the public to attend such hearings.
T 492/18 dealt with the issue of the attendance of an accompanying person by means of video connection. The appellant requested that the oral proceedings be held by way of videoconference, or if this were not allowed, that a member of the appellant's patent department participate in them by video connection. The respondent did not consent to the oral proceedings being held by videoconference. Therefore, the board refused the request for the video conference, given the lack of agreement of the respondent and given that travel within Germany was still possible. The oral proceedings took place in person. The board stated that the possibility of holding oral proceedings by videoconference was predicated on the boards' ability to offer the necessary technical facilities. These technical facilities must be under the continued control and supervision of the board. To the extent that it was technically feasible, the board must be in the position to control who was participating in the oral proceedings, and to establish that all participants could be seen and heard properly by all persons attending, while also ensuring that it was clear to all who was attending the oral proceedings. These conditions were seen as necessary for the oral proceedings held by videoconference to be perceived as equivalent to usual oral proceedings held at the premises of the Office with the parties being physically present.
Additionally, at the time the decision was taken, the technical facilities of the boards of appeal were primarily geared to all parties participating remotely. Facilities for holding oral proceedings in mixed format, with members of a party attending at the Office's premises and other members attending remotely, were not available to the board for the oral proceedings. For these reasons, the board was not able to accede to the appellant's request.
C. Law of evidence
1. Evaluation of evidence by the department of first instance
(CLB, III.G.4.2.1 b))
In T 1418/17, the opposition division had considered the prior use resulting from the exhibition and demonstration of the "UWS 500" machine and cited as prior art (Art. 54(2) EPC) to be sufficiently proven, but had not considered the sale of this machine to various customers to be of a public nature. 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, OJ 1999, 245; G 1/12, OJ 2014, A114), 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).
None of these was apparent in this case. The board instead considered the opposition division's decision to be free of any errors of law or logic with regard to the issue of the public nature of the alleged prior uses, and therefore its evaluation of evidence was not open to objection. It thus agreed with the opposition division's findings and reasoning in the decision under appeal as to whether public prior uses had resulted from the sales of the "UWS 500" machine to various customers and from its exhibition and demonstration at trade fairs prior to the priority date of the contested patent, and deemed it expedient to put the reasons for its decision in abridged form in respect of these issues (public prior uses) pursuant to Art. 15(8) RPBA 2020. Unlike the opposition division, however, the board was of the opinion that the subject-matter of claim 9 of the main request had been anticipated by the cited public prior use in the form of the "UWS 500" machine's exhibition and demonstration at trade fairs. The main request was therefore not allowable.
T 1418/17 has to date been cited by two 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. And T 1604/16, even more recent, 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 (see below).
In T 1604/16, the invention related to a foldable ramp for loading a wheelchair into a vehicle. The opposition division concluded that there had been a prior use of the invention and, more specifically, that on the day the (former) opponent delivered to Ms M a car with a ramp as depicted in the photographs in E1/1, which took place as indicated in invoice E1, a ramp of this type was made available to the public. E1 showed that a car with a taxi ramp was sold and delivered to Ms M by the (former) opponent before the priority date. The photographs in E1/1 showing Ms M's car were taken by the (former) opponent after the filing date and after the car had had an accident and been repaired. A crucial point was therefore whether the ramp in the photographs was the same as the one delivered to Ms M when she bought the car. Ms M was also heard as a witness. The opposition division had based its assessment on E1, E1/1 and the witness's testimony. The evidence adduced before the board thus included documents E1, E1/1 and the minutes of the hearing of the witness at first instance.
Since the board did not itself hear the witness and only had the minutes as evidence, the question arose whether there were restrictions on its competence to review and set aside the opposition division's finding of fact. There were no issues in terms of the witness's credibility (see in general T 474/04), and the questions and answers reflected in the minutes did not leave any gaps or raise any questions which the board needed the witness to clarify.
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 in general, and particularly findings of fact made by a department of first instance. If the criteria set out in T 1418/17 were applied so broadly, this would amount to a considerable restriction of a board's competence. 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 well aware that there is case law on a restriction of the boards' competence when reviewing discretionary decisions. However, it 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, the evidence lay entirely within the sphere of the (former) opponent, who sold the car, carried out the repairs and took the photographs produced as E1/1. Concerning the photographs in particular, the board noted that the insurance company of the other car involved in the accident would have needed some photographs of Ms M's car at least just after the accident and that there were no such photographs on file. In view of this and 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.1.1. "Primary object of the appeal proceedings – Article 12(2) RPBA 2020".
D. Suspected partiality
1. Suspected partiality of members of the departments of first instance
1.1 Remittal and rehearing of a case
(CLB, III.J.4.2.)
In T 2475/17 the board had decided to remit the case to the department of first instance pursuant to Art. 111(1) EPC and Art. 11 RPBA 2020 since there had been a substantial procedural violation (infringement of Art. 113(2) EPC). It had also ordered that the appeal fee be reimbursed in full, pursuant to R. 103(1)(a) EPC. Moreover, it had confirmed that the decision under appeal contained a number of other errors. Against this background, the appellant had requested that the board order that the examining division conduct the examination proceedings in a completely different composition.
The board referred to G 5/91 (OJ 1992, 617), in which it was found that the requirement of impartiality applied in principle also to employees of the departments of first instance of the EPO taking part in decision-making activities affecting the rights of any party. A change in composition was justified not only if there was actual partiality but also if there was reason to suspect it, i.e. an appearance of partiality However, the apparent partiality had to be justified on an objective basis; purely subjective impressions or vague suspicions were not enough (G 1/05, OJ 2007, 362). The mere fact that a substantial procedural violation had occurred did not necessarily mean that partiality was apparent.
The board also noted, however, that the boards had held multiple times that the EPC did not offer any legal basis that would allow them to act as a substitute for the EPO management and order a change to the composition of the decision-making department of first instance (see, in particular, T 1221/97, T 71/99 and T 2111/13). Since the composition of the department of first instance was the responsibility of the EPO President, or rather his or her representatives, and not the department itself, Art. 111(1) EPC could not justify such an approach.
The board went on to explain that, nevertheless, there had also been decisions in which a board had ordered a change to the composition of the department of first instance. This had been done both in cases in which the decision under appeal had not met the requirements of Art.19(2) EPC (e.g. T 251/88, T 939/91 and T 1788/14) and in cases in which the board had found that the right to be heard had been violated (e.g. T 628/95, T 433/93, OJ 1997, 509; T 95/04 and T 2362/08). The board in T 2475/17, however, took the view that, in the latter case, a board had the power to order a change in the department of first instance's composition only if it had arrived at the conclusion that the composition had been the actual cause of the violation of the right to be heard and that the violation could only be remedied by changing the composition, i.e. particularly if there was reason to suspect that one or more members of the department of first instance were partial.
In addition, the board noted that any such order by a board was limited to requiring that the composition be changed so that the right of the parties to fair and lawful proceedings could be ensured. The scope of the change or which member of the examining or opposition division was replaced by whom remained the responsibility of those in whose remit the matter fell.
In this case, however, the board found that the appellant had not convincingly demonstrated that the procedural violations identified had resulted from the examining division's composition. In its view, the appellant's mere assertion that these procedural violations indicated partiality and that there was therefore the risk that the examining division would act in a biased manner when continuing the proceedings could not justify ordering that its composition be changed.
E. Formal aspects of decisions of EPO departments
(CLB, III.K.3.3.)
In T 989/19, the board held that, where the cover page of the examining division's decision had not been signed by all the division's members, this amounted to a substantial procedural violation and the decision was invalid.
Under R. 113(1) EPC, decisions had to be signed by the employee responsible and state their name. Since, in addition, Art. 18(2) EPC stipulated that examining divisions consisted of three examiners, the signatures of all three of those examiners were required (see also Guidelines, E-X, 1.3 – November 2018 version).
The appellant in the case in hand had not raised the matter of the missing signature of the second examiner, but the board had examined it of its own motion.
It was the boards' settled case law that the requirement laid down in R. 113(1) EPC, according to which EPO decisions had to be signed by the employee responsible and state their name, was not just a mere formality but an essential procedural step in the decision-taking process at first instance. The name and the signature served to identify the decision's authors and express that they unconditionally assumed responsibility for its content. This requirement was aimed at preventing arbitrariness and abuse and ensuring that it could be verified that the competent body had taken the decision. It therefore constituted an embodiment of the rule of law and its infringement amounted to a substantial procedural violation depriving the written decision of legal effect (see J 16/17 and T 390/86, OJ 1989, 30).
F. Apportionment of costs
(CLB, III.R.2.1.1 b))
In T 101/17 the board refused the respondent's (opponent) request for a different apportionment of costs. The respondent argued that the filing of auxiliary requests at the appeal stage – rather than at the stage of opposition – amounted to an abuse of procedure. Although the auxiliary requests were not admitted, it had nonetheless been necessary to prepare for the scenario that they would be admitted and to subsequently address them content-wise. The board considered that the case law of the boards of appeal did not support a different apportionment of costs. The board concurred with the approach taken in T 1848/12, namely that preparations for discussing the admission of late-filed documents were part of the normal work that can be expected of a party, as an application of the principle that each party bears its own costs. The board further observed that in order to establish any causal link between the respondent's expenses and the appellant's behaviour, the respondent would have to show that it was particularly the belated filing of requests that caused the expense rather than the filing of requests as such. The board failed to see what additional expenses the respondent had incurred by preparing for a discussion of these requests at the stage of appeal rather than at the stage of opposition, other than for the additional discussion on the admissibility of these requests. As a discussion on the admissibility of requests was a not uncommon occurrence in proceedings in general, this could hardly be credited with separately identifiable expenses. It was at least at this hurdle that the respondent's case failed and the request for a different apportionment of costs had to be refused. See also Chapter V.A.6.3. "Article 12(4) RPBA 2007".
1. No refund of duly paid renewal fees on account of time taken for examination proceedings
(CLB, III.U.1.)
In T 2069/18 the examining division, when deciding to refuse the application, had also rejected as inadmissible a request that seven renewal fees be refunded in view of its having taken no action in the examination proceedings for at least seven years. The board concurred with the examining division that there was no legal basis for such a request but found that this was not a bar to its procedural admissibility. The request had been admissible but unfounded.
The payment of renewal fees, the board observed, was governed by Art. 86 EPC, which provided that renewal fees for a European patent application were to be paid to the EPO in accordance with the Implementing Regulations. Its application was not linked to any particular action or inaction of those concerned, be it the applicant or the examining division. The upshot in this case was that, as the examining division had rightly found, the renewal fees at issue had been duly incurred and imposed. The refund arrangements laid down in the Rules relating to Fees, e.g. Art. 9 to 11 RFees, albeit inapplicable in the case in hand, showed that the EPC 1973 legislator had provided for the possibility of refunds in certain cases. Otherwise too, the EPO regularly refunded payments made without a legal basis of its own accord, on the grounds of equity. Renewal fees which had been duly imposed and paid were not retrospectively deprived of their legal basis because the EPO had been slow to act in examination proceedings. The fact of the matter was, firstly, that the payment of renewal fees was intended to ensure that only economically valuable applications (and patents) were pursued. Secondly, renewal fees, like other fees payable under the EPC, helped to cover the general need for funding that inevitably arose in running an authority such as the EPO which granted and maintained monopoly rights.
2. Debit orders – underpayment of the fee for appeal
(CLB, III.U.2.2., III.U.4.)
See chapter V.A.3. for T 2620/18 and T 3023/18, in both of which cases the fee for appeal had been paid by debit order in the reduced amount (Art. 2(1), item 11, RFees), although the appellant was not entitled to this reduction (R. 6(4) and (5) EPC).