BOARD OF APPEAL AND ENLARGED BOARD OF APPEAL CASE LAW 2018 AND 2019
IV. PROCEEDINGS BEFORE THE DEPARTMENTS OF FIRST INSTANCE
A. Examination procedure
1. Decisions with no text submitted or agreed by the applicant (Article 113(2) EPC)
(CLB, IV.B.3.2.3 a), III.L.2.1.)
In T 2081/16 the board distinguished the case at hand, where the patent had not been granted based on documents approved by the applicant, from G 1/10 (OJ EPO 2013, 194). It held that a decision to grant pursuant to Art. 97(1) EPC which was based on an application in a text which was neither submitted nor agreed to by the applicant, as was the case here, did not comply with Art. 113(2) EPC. Where the text intended for grant is not communicated to the applicant under R. 71(3) EPC, the fact that the appellant subsequently files a translation and pays the fees for grant and publishing is not decisive. The provisions of R. 71(5) EPC, in this regard, refer to R. 71(3) EPC and therefore presuppose that the applicant has not been notified of any text but of the text intended for grant (emphasis added by the board). Only in this case would R. 71(5) EPC apply and would the filing of a translation and the payment of the relevant fees imply the approval of the text communicated to it. In arriving at its decision, the board stated that it had not deviated from G 1/10 and that Art. 21 RPBA 2007 did not therefore apply. In G 1/10, the Enlarged Board of Appeal found that R. 140 EPC was not available to correct the text of a patent. This question was not at stake in the case in hand. In the case in hand, no text had been approved by the applicant. This was fundamentally different from attempts to impute mistakes in amended claims which were introduced by an applicant to the examining division "by suggesting the examining division did not intend to make a decision which in fact included the very text approved by the applicant himself – in order to bring the applicant's own error within the ambit of R. 140 EPC" as referred to by the Enlarged Board in G 1/10 (see point 11 of the Reasons).
In the decision under appeal in T 1003/19 the appellant had not requested the grant of a patent with any other than the seven drawing sheets as initially submitted and published. The communication under R. 71(3) EPC, however, referred only to "drawings, sheets 1/1 as published". The board found that the decision under appeal did not comply with Art. 113(2) EPC and that the examining division had committed a substantial procedural violation. The request for reimbursement of the appeal fee was however rejected; while the error was committed by the examining division, the appellant had several instances to spot this error and, at the latest, could and should have noticed it when comparing the text of the communication under R. 71(3) EPC and the "Druckexemplar". In arriving at its decision, the board stated that the consequence as stipulated in R. 71(5) EPC, i.e. "the applicant ... shall be deemed to have approved the text communicated to him under paragraph 3", only applied where the applicant, according to R. 71(3) EPC, had been informed "of the text in which it [i.e. the examining division] intends to grant" the patent. The meaning of the word "text" (in German: "Fassung") is not limited to written information but may contain visual information as can be deduced from R. 73(1) EPC: "The specification of the European patent shall include the description, the claims and any drawings." With reference to the case in hand the board further stated that the EPO may on its own initiative suggest minor amendments; however the removal of all drawing sheets showing embodiments of the invention could not be expected to be accepted by an applicant.
The board stated that it had not deviated from G 1/10, which based its consideration on the requirement according to R. 71(3) EPC that the applicant must be informed of the text in which the examining division intends to grant a patent (see point 10 of the Reasons) and deals with the applicant's possible reactions thereto, like the implicit approval of this text. In contrast thereto the board's decision in the case in hand was based on the fact that the text intended for grant by the examining division had, based on verifiable facts, not been communicated to the appellant and, therefore, R. 71(5) EPC did not (at that time) apply. As a result, no text had been approved by the appellant.
2. Amendments and corrections requested according to Rule 71(6) EPC
(CLB, IV.B.3.3.2)
In T 1567/17 the board held that the applicant's remark in a response under R. 71(6) EPC that an amended feature "can also be omitted if regarded as violating Art. 123(2) EPC" could not be construed as waiving its right to be heard and its right to a reasoned decision in case the application were to be refused. Rather, this remark merely intimated that the applicant would accept the issue of a new communication under R. 71(3) EPC on the basis of the amended set of claims without said feature. The appellant had been given no opportunity to respond to the division's opinion on this issue and the board held that the direct refusal of the application by the examining division was in violation of Art. 113(1) EPC. Surrender of a right cannot be simply presumed (referring to G 1/88, OJ EPO 1989, 189; T 685/98, OJ EPO 1999, 346).
3. Additional search necessary: limited discretion of the examining division
(CLB, IV.B.4.1.2)
In T 1895/13 the board found the request for a refund of the search fee in the absence of any cited document to be inadmissible. Concurring with the reasoning in points 24 to 29 of the Reasons in T 2249/13, the board stated it could only apply the EPC and associated provisions as they were. Art. 9(1) Rules relating to Fees provides for a refund of the search fee only in the case that the European patent application is withdrawn at a time when the Office has not yet begun to draw up the search report, but not in the case of a no-search declaration under R. 63 EPC. Furthermore, the search division could be assumed to have analysed the set of claims before taking the decision to issue a no-search declaration, and, hence, it could not be argued that the EPO had been unjustly enriched. The board explained that it was also not competent to decide on claims for compensation in respect of a loss or damage allegedly caused by the EPO in the course of patent grant proceedings (see J 14/87, OJ EPO 1988, 295).
B. Opposition procedure
1. Filing and admissibility requirements – sufficient substantiation of grounds for opposition
(CLB, IV.C.2.2.8 b))
In T 623/18 the board guarded against a too strict approach. The board emphasised the purpose of the statement under R. 76(1) and (2)(c) EPC, as explained in G 9/91 and G 10/91 (OJ EPO 1993, 408 and 420), namely to define the extent and scope of the opposition and the legal and factual framework, within which the substantive examination of the opposition is in principle conducted, as well as to give the patentee a fair chance to consider his position at an early stage of proceedings. The board saw no basis for making admissibility of the opposition dependent on the assessment of substantive questions, in particular on whether an objection merely related to a lack of clarity or could support the ground for opposition under Art. 100(b) EPC. It was also a matter of substantive examination to characterise the person skilled in the art, for whom, according to Art. 100(b) EPC, the description should be sufficiently clear and complete, and for whom obviousness over the prior art was to be assessed according to Art. 100(a) EPC in combination with Art. 56 EPC.
In T 2037/18 the opposition division had rejected an opposition based on prior use as insufficiently substantiated and therefore inadmissible, stating in its reasons that no information had been presented to rebut the presumption that confidentiality was implicitly expected in a manufacturer-customer relationship in the period around the handover/acceptance of trains. The board did not share this view.
It first stated that, under the rules on the burden of assertion and proof applicable in EPC proceedings, each of the parties had to present and prove the facts in their favour (T 219/83, T 270/90). It then explained that the sale of a ready-to-use object to a third party was the typical case of something being made publicly available (T 482/89), since the third party usually had an interest in using the object as they saw fit. Thus, when an object was sold to a customer, it and its identifiable technical features became publicly available on its handover to that buyer (positive fact) unless the buyer was bound by a confidentiality obligation (negative fact). Accordingly, it was for the opponent to assert and prove such a handover to a buyer (T 326/93), whereas it was for the patent proprietor to assert and prove that this buyer had been bound by any confidentiality obligation (T 221/91, T 969/90), as was reflected in the principle "negativa non sunt probanda", i.e. a negative need not be proved, recognised in the boards' case law (R 15/11, R 4/17).
The board went on to observe that the burden of assertion and proof could shift but not until the party initially bearing it had produced prima facie evidence or argued a typical course of events supporting a presumption as to the facts (T 570/08). A patent proprietor's submissions could therefore place a secondary burden of assertion and proof on the opponent, but only from that point on ("ex nunc") and so without any bearing on what it was required to substantiate in its notice of opposition under the third point of R. 76(2)(c) EPC.
The board considered that there was no need in the case in hand to rule on whether it would have decided differently if the opponent itself had asserted during the opposition proceedings circumstances giving rise to one of the presumptions in favour of a confidentiality agreement recognised in the boards' case law, since no such circumstances were involved here. In particular, nowhere in their case law had the boards recognised a presumption that manufacturers of rolling stock and railway companies generally undertook to maintain confidentiality as regards delivered and accepted vehicles.
In T 16/14 the opponent (appellant) had filed an author's copy of an article in a technical journal (E1) to substantiate its ground for opposition under Art. 100(a) EPC. The opposition division had considered this insufficient on the basis that it had not been proven that E1, the only document cited in this respect, had been published. The respondent contended that it had not been known at the time of filing of the opposition that E1 was an author's copy. The board rejected this line of argument. It could readily have been established whether there was any difference in content between the produced author's copy and the article actually published, as E1's publisher had at any rate been specified in such a way that such a check could have been performed without undue burden. Besides, the appellant had not only already offered in its notice of opposition to produce the actually published article but also gone on to do so (E1a). The board further found that document E1/E1a had been made available to the public before the priority date of the patent in suit (31 October 2006) and therefore concluded that the ground for opposition under Art. 100(a) EPC had been sufficiently substantiated.
2. Late submission
2.1 Concept of "in due time"
(CLB, IV.C.4.3.)
In T 1551/14, during the written proceedings that followed initial oral proceedings before the opposition division, at which four witnesses had been heard, the patent proprietor had filed a new auxiliary request limiting the subject-matter of the two independent claims by a new feature. Having been summoned to a second round of oral proceedings, the opponent had filed, within the period fixed under R. 116 EPC, a statutory declaration made by one of the previously heard witnesses and proposed that that witness be heard again. The opposition division had decided not to re-examine the witness and not to admit his statutory declaration.
For the board, however, the declaration, which dealt with matters that had become relevant only once the new auxiliary request had been filed, was a direct reaction, submitted within the available time, of the opponent (appellant) to that request, and therefore could not be treated as filed late. In deciding not to admit it despite having admitted the auxiliary request, the opposition division had denied the opponent its right to be heard and so committed a procedural violation. The board did not share the appellant-proprietor's misgivings that the declaration conflicted with the case made so far. That submissions filed as a legitimate reaction to an amendment to the counter-party's case contained contradictions was in any event not a proper basis for refusing to admit those submissions from the outset. The board nevertheless observed that several statements made in the declaration were worded in precisely the same way as the new auxiliary request. Given that the points the witness had made were relevant for assessing patentability but supported only by his declaration, the question of his credibility was crucial. That question could be settled only by hearing him again, if necessary under oath before a national court (R. 119 and 120(2) EPC). The board therefore remitted the case to the opposition division for further prosecution with an order that it continue taking evidence by hearing the witness concerned.
2.2 Exercise of discretion – prima facie relevance
(CLB, IV.C.4.5.3)
In T 1525/17 the opposition division had taken the view that the subject-matter of claim 1 as granted was inventive over E1 and E2 in combination with E3, E4, E5 or E6 but decided not to admit the late-filed citations E5 and E6 because considering them would make no difference to its decision. The board observed that a decision to disregard certain late-filed facts or evidence amounted to their non-admission: "not admitting" and "disregarding" facts and evidence not submitted in due time meant the same thing. The board observed that it was inherently contradictory to take late-filed documents as a basis for an in-depth examination of the patentability requirements, and so consider them as to their substance, yet at the same time declare them not admitted, as the opposition division had done in this case, having fully considered documents E5 and E6 in its thorough substantive assessment of inventive step.
As a rule, that documents had been examined as to their substance meant that a board could fully review their examination on appeal or at least that it was barred from holding them inadmissible under Art. 12(4) RPBA 2007 on the basis that they had not been admitted by the department of first instance, when their purported non-admission had in fact been inherently contradictory and so amounted to an improper exercise of discretion (see T 2324/14 and T 2026/15).
2.3 New argument versus new chain of reasoning
(CLB, IV.C.4.7.)
In T 2053/13 the appellant's (opponent's) inventive step assessment starting from the teaching of document D3 was first presented on the day of the oral proceedings before the opposition division. Document D3 itself had been filed with the notice of opposition; it was however not presented as the closest prior art, but mentioned only in a footnote for a marginal issue. The board recalled that according to G 4/92 (OJ EPO 1994, 149), arguments are reasons based on facts and evidence which have already been put forward. The board considered that rather than merely presenting an additional argument in support of a chain of reasoning already known in an established factual context, the appellant had changed its case. The submission in question introduced a whole new chain of reasoning based on the allegation that document D3 was a promising springboard to the invention as claimed. Thus, the appellant's submission related to a new alleged fact. Filing a piece of evidence did not mean that any alleged fact or objection potentially derivable from that evidence was also introduced into the proceedings. The board was also satisfied that the opposition division had exercised its discretionary power pursuant to Art. 114(2) EPC and R. 116(1) EPC in a reasonable manner when it did not admit the appellant's (then opponent's) new submission.
3. Amendments in opposition proceedings
3.1 Time frame for filing amendments – discretion of the opposition division
(CLB, IV.C.5.1.3)
In T 802/17 the opposition division had given the patent proprietor an opportunity to draft one additional request during the oral proceedings. However, as it had then filed only an amended main request, its later request for permission to file amended auxiliary requests too was refused. In the board's view, the presumably underlying considerations of procedural economy (which the opposition division had anyway merely hinted at) had been insufficient to justify this refusal in the circumstances, as the proprietor had been reacting to a new objection under Art. 123(2) EPC, which had been a surprising turn taken in the proceedings and which its amendment had overcome.
In T 368/16 the opposition division allowed the proprietor to file various auxiliary requests in the course of the oral proceedings. Request IIIb was admitted and found to comply with the requirements of Art. 83 and Art. 123(2) EPC. Its process claim 1 was held to be novel but not its product claim 23. The proprietor then filed a further request consisting only of process claims 1 – 22 of request IIIb. This request IVa was not admitted by the opposition division. Based on the following considerations the board held that the opposition division had exercised its power of discretion under R. 116(2) EPC in an unreasonable way and by not applying the proper principles: The request per se was apt to overcome all the objections discussed so far during oral proceedings. Even if inventive step had still to be discussed, its filing could not be considered as an attempt to prolong unnecessarily the proceedings; on the contrary, since request IVa was based on a convergent limitation with respect to request IIIb and on a combination of features derived from the granted claims, it clearly restricted the issues remaining to be discussed.
In T 688/16 the opposition division had revoked the patent after refusing under Art. 114(2) EPC to admit auxiliary requests 2 and 3 filed during the oral proceedings on the ground that they clearly lacked novelty. The appellant (patent proprietor) requested on appeal that this decision be set aside and that the patent be maintained in amended form on the basis of its main request, which corresponded to the auxiliary request 3 it had filed during the opposition proceedings. The board held that the opposition division had lacked discretion to decide whether (or not) to admit auxiliary request 3. It had cited Art. 114(2) EPC but it served as a basis only for discretion to admit or refuse facts or evidence. Discretion not to admit late-filed requests was instead conferred by R. 116(2) EPC, but it could be exercised only if the patent proprietor had been notified of the grounds prejudicing the maintenance of its patent and invited to submit new documents by the date fixed under R. 116(1) EPC, in which case sentences 3 and 4 of R. 116(1) EPC applied mutatis mutandis. That discretion was thus conditional on a communication stating that grounds prejudiced the maintenance of the patent. In the case at issue, however, the opposition division had not issued any such negative communication but only one stating its provisional opinion that none of the grounds for opposition prejudiced maintenance of the patent as granted. The board found that R. 116(2) EPC had thus not been applicable. On the contrary, since the opposition division had not changed its provisional view until the oral proceedings, it ought to have given the patent proprietor an opportunity to respond accordingly by submitting a new request. The board could see no grounds for refusing to admit the main request on appeal, which had already been filed with the statement of grounds of appeal and so, exercising its discretion, decided to admit it in accordance with Art. 12(4) RPBA 2007.
3.2 Scope of examination of amendment
(CLB, IV.C.5.2.1)
In T 1437/15 the board pointed out that the grounds for opposition specified in Art. 100 EPC concerned only the maintenance of a granted patent (Art. 101(1) and (2) EPC). By contrast, where a patent was amended during opposition proceedings, it could be maintained as so amended only if, taking into consideration the amendments made, it met the requirements of the EPC (Art. 101(3) EPC).