Résumé de Art 15(5) RPBA 2020 pour la décision T0196/22 du 12.01.2024

In T 196/22 the respondent (patent proprietor) requested to be given time to formulate two questions that should be referred to the Enlarged Board, the first relating to the interpretation of synergy and the second to the standard for not admitting auxiliary requests into the proceedings (here: 11a, 12, 12a or 14a). While the respondent acknowledged that the discussion on these points had been closed and that the board had announced its conclusions with regard to synergy and had taken the decision not to admit the above auxiliary requests into the proceedings, they argued that the necessity of a referral lay in the board's conclusions, which could only be known once the board had reached them. The board recalled that during the discussions on the above two points, the respondent had neither explicitly requested a referral, nor argued that these issues were of fundamental importance or that the board when coming to a certain conclusion would be deviating from previous case law. Furthermore, since the board's communication expressing its provisional opinion had mentioned both the question of synergy and the question of problems with late-filed requests, the representative had not been confronted with new issues that might have taken him by surprise. The board took the view that it should not give a party time to formulate questions for a potential referral with regard to points that had already been discussed and decided, for the following reasons. Oral proceedings were meant to put the deciding body, in this case the board, in a position to decide on the issues in dispute. The board explained that in order to do so, the procedure was structured into different stages, and once a certain stage had been concluded, a party may no longer be able or allowed to undertake certain procedural acts. Once an issue had been discussed in oral proceedings, the board closed the debate on this issue, deliberated thereupon and announced its conclusions. The board was unlikely to reopen the discussion once the parties had been properly heard and the board felt in a position to form an opinion. According to the board, the respondent's request for time in order to formulate questions to the Enlarged Board could have had, in the case at issue, no other purpose but to reopen a debate that had already been concluded. As the board had already reached its conclusions, a reopening of the discussion was at the discretion of the board, and the board decided that no such reopening had been opportune or necessary. As to the respondent's argument that the point they wanted to make with the referral had only become pertinent once the board had reached its conclusions, the board found that reopening the discussion on any issue relevant to the decision was subject to the procedural avenues that were available. With regard to a decision rendered by the boards of appeal, the only judicial remedy was a petition for review, as had been pointed out to the respondent during the oral proceedings. In addition, the board held that if the respondent was correct in its argumentation, parties to an oral hearing would be entitled to request a referral to the Enlarged Board every time the board reached an adverse conclusion. Should a party to proceedings before the boards of appeal be convinced that certain questions merit the attention of the Enlarged Board, this argument should be made before or during the discussion on this question, but certainly not afterwards. The board concluded that, for these reasons, it was within its discretion to refuse a request by a party for time to formulate questions to the Enlarged Board, the only purpose for which could be to reopen a debate that had already been closed and upon which the board had relied to reach its conclusions.