I. Shimano Inc petitions for review of the decision T 0810/09 dated 25 September 2102 taken by Board 3.2.06, whereby its appeal against the decision of the Opposition Division revoking its European patent number 1 462 282 was dismissed.

II. The patent was filed as a divisional application. It concerns a bicycle-pedal axle and things known as "splines". These splines are toothed or cog-like projections on a male axle body that fit into a correspondingly shaped female part. The parent application disclosed splines such that they did not "extend radially outwardly relative to the outer peripheral surface of [the] axle body. Instead the splines are flush with the outer peripheral surface of the axle body." Claim 1 of the patent as granted specified only that these splines "do not extend radially outwardly relative to the outer peripheral surface of the axle body."

III. In opposition proceedings the Opposition Division had expressed a preliminary view inter alia that the claim 1 should specify that the splines were flush with the outer peripheral surface of the axle body so as to meet "the requirements of Article 76(1) EPC". In response the petitioner filed eight auxiliary requests, of which only claim 1 of the second auxiliary request took up this point, i.e. specified that the splines did not extend radially outwardly relative to the outer peripheral surface of the axle body but instead were flush with the outer peripheral surface of the axle body. During the oral proceedings before the Opposition Division, and after the petitioner's main request (claim 1 as granted) was not allowed, the petitioner withdrew its second auxiliary request. All other requests were held not to meet the requirements of Article 76(1) EPC and the patent was revoked.

IV. The petitioner appealed and requested that the patent be maintained as granted or alternatively according to the claim sets arranged as Groups I to IV. In a communication the Board informed the parties that it provisionally agreed with the Opposition Division's decision. The Board also questioned whether the auxiliary requests of Group IV should be admitted into the proceedings having regard to Article 12(4) of the Rules of Procedure of the Boards of Appeal (RPBA), since they appeared to be based on the second auxiliary request which had been withdrawn before the Opposition Division. In response the petitioner filed amended claims, consisting of a main request and claim sets now arranged as Groups I, II and III. Group III was a reduced version of former Group IV, consisting of requests III.1 to III.4.

V. Oral proceedings were held before the Technical Board of Appeal on 25 September 2012. During the discussion it is apparent that an issue arose for the first time concerning the Opposition Division's reliance on Article 76(1) EPC in refusing the then main request. The Board apparently indicated its view while Article 123(2) EPC would have been the correct article to apply, the wrong reference to Article 76(1) EPC had made no difference in substance to the result. In reaction to this the petitioner filed a request during the oral proceedings which, as translated by the Board from the German, reads:

"The proprietor and appellant subsidiarily requests beyond all requests submitted so far

that the case be remitted to the opposition division for continuation of the opposition proceedings on the question whether the claimed "bicycle crank axle" was originally disclosed in the earlier application EP 1 342 655 A2 as subject-matter which could be claimed separately

and, further subsidiarily,

that the case be remitted to the opposition division for continuation of the opposition division to clarify the basis for revocation of the patent in suit by the opposition division and/or that the decision be corrected in this respect."

VI. This request was refused for reasons set out in the written decision of the Board. Subsequent steps in the proceedings were then essentially as follows: The Board concluded that claim 1 of the petitioner's main request and of the auxiliary requests of Group I did not satisfy the requirements of Article 123(2) EPC. The auxiliary requests of Group II were found to contravene Article 123(3) EPC. Auxiliary request III.1 was withdrawn. Auxiliary requests III.2 and III.3 were not admitted into the proceedings in exercise of the discretion referred to in Article 12(4) RPBA. Auxiliary request III.4 was not admitted into the proceedings in exercise of the discretion under Article 13(1) RPBA. Following the Board's decision not to admit auxiliary requests III.2 and III.3 into the proceedings the petitioner filed an objection under Rule 106 EPC, which was dismissed by the Board. By the end of the proceedings, the petitioner's requests were as follows: that the patent be maintained on the basis of the main request or on the basis of one of the auxiliary requests of Groups I or II, or requests III.2 to III.4. By its decision announced at the end of the oral proceedings and for reasons in writing sent to the petitioner on 20 December 2012 the Board dismissed the appeal.

VII. The petition was filed on 21 February 2013 and the appropriate fee was paid on the same day.

VIII. The petition is concerned with the following aspects of the Technical Board's decision:

(a) The refusal of the petitioner's requests for remittal or correction of the decision, set out at point V, above.

(b) The decision that claim 1 of the main request contravened the requirements of Article 123(2) EPC.

(d) The refusal by the Board to admit the requests III.2 and III.3 into the proceedings.

IX. On 26 April 2013 the Enlarged Board sent the petitioner a summons to oral proceedings together with a communication setting out the Board's provisional views, which were that to the extent that the petition was not clearly inadmissible it was clearly unallowable. The petitioner filed a reply to this on 21 June 2013.

X. Oral proceedings before the Enlarged Board constituted under Rule 109(2)(a) EPC took place on 25 July 2013.

XI. The petitioner's arguments in writing and as supplemented during the oral proceedings can be summarised as follows, adapting the headings used in the petition.

(a) Complaint No. 1: Fundamental procedural defect due to an erroneous application of Article 76(1) EPC

The Opposition Division wrongly applied Article 76(1) EPC when considering whether the subject matter of claim 1 of the granted patent was disclosed in the parent application, this article having no relevance to a granted patent, so that the Opposition Division's decision was legally incorrect. The Board of Appeal then refrained from correcting the decision, which was not just an erroneous citation of a wrong legal provision but a substantial procedural defect as a truly non-correct decision has been given legal force in dismissing the appeal. The refusal to correct the erroneous reference to Article 76 EPC had had serious consequences for the petitioner in national infringement proceedings in respect of the patent and also two German utility models which had been branched off from it. The defendants in these proceedings had used the reference to Article 76 EPC to sow seeds of confusion, it now being alleged that the parent application was prior art.

In its letter of 21 June 2013 the petitioner further said that during the oral proceedings the Technical Board had stated that a correction of the decision under Rule 140 EPC as requested was not appropriate and that the Board was also not intending to remit case. The reasons for this latter decision were, however, not apparent to the petitioner until after receiving the written reasons so that no objection under Rule 106 was possible at the time. It was said that " ... the request to correct the erroneous application of Art. 76(1) EPC is at least admissible and allowable under Art. 112a(2)(d) EPC in combination with Rule 106 2nd clause EPC."

In the course of the oral proceedings before the Enlarged Board the petitioner explained that the request to remit the case or correct the decision of the Opposition Division had been filed as a reaction to the new argument from the Technical Board at the oral proceedings that the Opposition Division's reference to Article 76(1) EPC was a simple mistake with no legal consequences. With the filing of the request the petitioner's representative understood that the issue had been taken care of. The complaint was that the petitioner had not been properly heard on this issue (Article 113(1) EPC)

(b) Complaint No. 2: Fundamental procedural defect and violation of the right to be heard due to non-consideration of the so-called "essentiality test"

In respect of claim 1 of the main request and the objection under Article 123(2) EPC, the Technical Board incorrectly held that the so-called "essentiality test" was inapplicable and in doing so the Board had disregarded essential arguments of the petitioner. This constituted a significant procedural defect and also a violation of the right to be heard. The fact that the essentiality test was a relevant test (amongst others) was demonstrated by a copy of a presentation on "Amendments" which had been issued by the Office in September 2012. This was not available to the petitioner until after the oral proceedings and so it was not possible to present arguments pointing to the procedural defect and a violation of the right to be heard.

In the course of the oral proceedings before the Enlarged Board the petitioner explained that during the oral proceedings before the Technical Board the Board had said that the "essentiality test" was not applicable. The petitioner was not in a position to answer this effectively but if it had had the presentation which had been issued by the Office in September 2012 it might have been possible to do so.

Although the reasoning given by the Technical Board was virtually identical to the argument presented by Opponent 2 during the oral proceedings nevertheless during the oral proceedings the Board had not argued accordingly, but judged the subject matter of claim 1 to contravene the requirements of Article 123(3) EPC as it was not prima facie clear whether the amendment broadened the scope of protection or not. Accordingly, the arguments presented in the written decision were not presented or acknowledged by the Board during oral proceedings.

Further, the reasoning of the Board was in any event technically wrong. Also, whereas the Board had earlier said (in relation to the main request) that the parent application disclosed only one embodiment, namely one with flush splines, these auxiliary requests, limiting the subject matter to an embodiment with only flush splines, were now not admitted into the proceedings on the ground that they now allegedly broadened the scope of protection. This conflicting argument and the decision of the Board of Appeal violated the petitioner's right to be heard. The appellant was given no chance to discuss patentability issues of an apparently admissible group of requests.

In its letter of 21 June 2013 the petitioner said that after discussion of this issue by the parties, the Board, without giving any reasoning, had announced that the requests violated Article 123(3) EPC. It was only when the petitioner received the written reasons for the decision that the petitioner learnt that the Board had adopted the argument of Opponent 2. The petitioner had not had the opportunity to counter this conclusion.

In the course of the oral proceedings before the Enlarged Board the petitioner explained that during the oral proceedings the Technical Board appeared not be sure whether the objection was valid or not. From the petitioner's point of view the objection was technically absurd and the petitioner could not really understand where the doubt lay. If the petitioner had known that the Board had any doubts on the point it would have wanted to make further submissions.

(d) Complaint No. 4: Violation of the right to be heard in terms of non-admission auxiliary requests III.2 and III.3

These requests were not the same as the second auxiliary request which had been withdrawn before the Opposition Division: further distinguishing features had been introduced. It was pure speculation whether or not these requests could have been presented earlier. If the petitioner had maintained its second auxiliary request before the Opposition Division there would have been no possible objection to it under Article 123(2) EPC and so the discussion would have moved on to novelty and inventive step. Whether in the course of this discussion the petitioner would have made further amendments resulting in claims identical to those of the Group III requests could not be foreseen. The Technical Board exercised its discretion on the basis of a speculative opinion and had simultaneously cropped the possibility for petitioner to discuss apparently admissible requests in the light of the prior art.

In its letter of 21 June 2013 the petitioner said that the issue as regards the application of Article 12(4) RPBA was not whether such requests could have been presented before the Opposition Division but whether they would have been.

In the course of the oral proceedings before the Enlarged Board the petitioner emphasised the above points and added that these requests, with the additional features added to those of the second auxiliary request withdrawn before the Opposition Division, solved all the objections raised by the Technical Board to its previous requests.

XII. The petitioner requested that:

(a) The decision of the Technical Board of Appeal be set aside and the proceedings be reopened;

(b) The fee for the petition be reimbursed.

Reasons for the decision

1. Introduction

1.1 The provisions of Article 112a(4) EPC and Rule 107 EPC are satisfied.

1.2 In relation to each of the petitioner's separate complaints it has to be examined whether the petition, insofar as it is based on that complaint, is either clearly inadmissible or clearly unallowable. See decision R 3/08 of 25 September 2008, point 1.3 of the Reasons.

1.3 As the Enlarged Board made clear in its communication sent with the summons to oral proceedings, the Board was in several respects unable to understand the legal basis of the petition. As was said by the Enlarged Board in decision R 5/08 of 5 February 2009, point 22 of the Reasons:

"... the contents of a petition must be sufficient for the petitioner's case to be properly understood on an objective basis and must be so presented as to enable the Enlarged Board (and any other parties) to understand immediately why the decision in question suffers from a fundamental procedural defect which can be the subject of an objection under the provisions on review. The petition must thus set out the reasons why it requests that the impugned decision be set aside, specify the facts, arguments and evidence relied on and must do so by the end of the time for filing the petition, namely two months after notification (Article ll2a(4) EPC)."

The Board in that case concluded that apart from any further submissions considered in exercise of the Enlarged Board's discretion under Article 12(1) of the Rules of Procedure of the Enlarged Board of appeal ("RPEBA"), the petition itself must therefore be adequately substantiated (point 22).

1.4 In various respects, which the Board will deal with in relation to the particular complaints, the petitioner failed to follow these basic principles.

2. Complaint No. 1: Fundamental procedural defect due to an erroneous application of Article 76(1) EPC

2.1 This part of the petition does not begin to explain the basis on which the remedies under Article 112a EPC are invoked. In its preamble the petition generally alleges two separate fundamental violations of Article 113 EPC and two separate fundamental procedural defects according to Article 112a(2)(d) but without further detail. In fact, in the body of the petition itself three of the complaints (Nos. 2, 3 and 4) expressly refer to an infringement of the right to be heard. Complaint No. 1 cannot be understood to contain such a reference. If the reference in the heading to a "fundamental procedural defect" is intended to be a reference to Article 112a(2)(d) EPC, there is no further explanation.

2.2 Furthermore, in the petition it is neither alleged that a relevant objection under Rule 106 EPC was raised during the oral proceedings before the Technical Board nor is it explained in the alternative why the petitioner was not able to raise such an objection.

2.3 In its communication the Enlarged Board said that it was not able to understand the legal basis of the complaint. As part of its response in its letter dated 21 June 2013 the petitioner said, after repeating and expanding on its complaint:

" ... the request to correct the erroneous application of Art. 76(1) EPC is at least admissible and allowable under Art. 112a(2)(d) EPC in combination with Rule 106 2nd clause EPC."

In so far as this is to be understood as invoking Article 112a(2)(d) EPC and either of the two further fundamental procedural defects provided for in Rule 104 EPC, the complaint is not further substantiated. As to the defects referred to in Rule 104 EPC, (a) oral proceedings were held by the Technical Board as requested and (b) the Board decided on the requests which the petitioner filed in respect of this issue (see points V and VI, above). The reference to Rule 106 EPC was not explained

2.4 In the course of oral proceedings before the Enlarged Bard the petitioner said that what was in fact being alleged was an infringement of the right to be heard under Article 113(1) EPC. The petitioner had not been properly heard on the requests for remittal or correction which had been filed. It was argued that the preamble in the petition generally alleged fundamental violations of Article 113 EPC and this was enough.

2.5 Neither this submission nor any factual basis for it is to be found in the petition. Nor was it explained why the petitioner had not been able to raise an objection under Rule 106 EPC.

2.6 The Enlarged Board has a discretion under Article 12(1) RPEBA to consider new submissions made after the expiry of the time for filing the petition "if this is justified for special reasons". No special reasons were advanced by the petitioner to justify the Enlarged Board considering these submissions but in any event they are hopeless and could not alter the result even if considered by the Board. The petitioner filed its requests apparently in response to an argument raised by the Board. The requests were then discussed and rejected. The petitioner made no objection to the course of events under Rule 106 EPC. The Board gave full reasons in its written decision for refusing the requests.

2.7 As regards this complaint, therefore, even if the petition were not clearly inadmissible it is clearly unallowable.

3. Complaint No. 2: Fundamental procedural defect and violation of the right to be heard due to non-consideration of the so-called "essentiality test"

3.1 The file shows that the petitioner raised this issue in its grounds of appeal and that the Technical Board in its communication expressed its preliminary view that the test was not applicable in the circumstances of the case. It is not disputed that the point was then discussed during the oral proceedings and that during the discussion the Board indicated its disagreement with the petitioner's submission. In the oral proceedings before the Enlarged Board the petitioner said that the Technical Board had indeed made its view very clear that the "essentiality test" was not applicable. Further, it is not suggested in the petition that the petitioner did not know during the oral proceedings that the Technical Board had come to the conclusion that the subject matter of the petitioner's main request infringed Article 123(2) EPC and was not allowable and thus that the petitioner's submission had not been accepted.

3.2 No objection under Rule 106 EPC was however raised by the petitioner. In the petition it was said that the petitioner was not able to present its arguments pointing to a procedural defect and a violation of the right to be heard because the Office's September 2012 presentation on Amendments was not then available to the petitioner.

3.3 In its communication the Enlarged Board said it did not understand what the procedural defect was alleged to have been or how the petitioner's right to be heard was said to have been violated. The petition did not appear to substantiate any reason why the complaint which the petitioner was now making could not have been raised during the oral proceedings before the Technical Board. The presentation said to have been issued by the EPO appeared to be irrelevant in this respect.

3.4 In oral proceedings before the Enlarged Board the petitioner in effect said that its right to be heard was infringed because the petitioner was not in a position to answer the Technical Board's assertion that the essentiality test was not applicable. If the petitioner had had the Office's presentation it might have been able to persuade the Technical Board otherwise.

3.5 The petitioner, however, was not only in a position to answer the Technical Board's view on the essentiality test but actually did so. The petitioner did not raise an objection under Rule 106 EPC when the Board said the request was not allowable. It is always the case that a party may come across materials after a decision has been taken that could possibly have helped its case. But this has nothing to do with the right to be heard.

3.6 As regards any complaint of a violation of the right to be heard in respect of this complaint, the petition is therefore clearly inadmissible.

3.7 In the petition this complaint is headed "Fundamental procedural defect and violation of the right to be heard due to non-consideration of the so-called 'essentiality test'" (underlining added by the Board). In the body of the petition under this complaint reference is also made to a "procedural defect and a violation of the right to be heard" (underlining added by the Board). To the extent that this complaint was intended to embrace a fundamental procedural defect under Article 112a(2)(d) EPC, no such complaint was substantiated in the petition or explained subsequently (see also point 2.1, above). It was not alleged that any objection under Rule 106 EPC was made in respect of this complaint or that the petitioner was unable to raise such an objection.

3.8 As regards this complaint as a whole, therefore, it is clearly inadmissible.

4. Complaint No. 3: Violation of the right to be heard in terms of non-admission of the Group II auxiliary requests

4.1 In the petition it was said that the reasoning given by the Technical Board for admitting these requests was virtually identical to the argument presented by Opponent 2 during the oral proceedings. The petitioner nevertheless said that during the oral proceedings the Technical Board did not "argue[] accordingly, but judged subject matter of claim 1 to contravene the requirements of Art. 123(3) EPC as it was not prima facie clear whether the amendment broadened the scope of protection or not. Accordingly, the arguments presented in the written decision have not been presented or acknowledged by the Board of appeal during oral proceedings." Further arguments were advanced as to why the right to be heard had been infringed (see point X(c), above).

4.2 In its communication the Enlarged Board remarked that this complaint appeared to be partly based on something which the petitioner said it only learnt when it received the written reasons for the Board's decision. The Enlarged Board said that it would therefore provisionally assume in the petitioner's favour that the requirements of Rule 106 EPC were satisfied. The Enlarged Board, however, went on to say that it again failed to understand the legal basis of the complaint. The petitioner did not allege that it was not given the opportunity to argue why this group of requests was admissible. Indeed the petitioner itself said that the written reasons given by the Board corresponded to the arguments of Opponent 2. It followed that the petitioner knew what the possible arguments against these requests were and had the opportunity to respond.

4.3 During the oral proceedings before the Enlarged Board the petitioner said that the Technical Board appeared to be uncertain that the objection was valid and so far as the petitioner was concerned the objection was technical nonsense anyway (it is not necessary to go into the petitioner's explanation of why this was so). In effect the petitioner argued that if it had known the Board was going to take Opponent 2's arguments seriously it would have wanted to make further submissions.

4.4 The petitioner had heard Opponent 2's submissions and had made its own in answer. The Board then decided against the petitioner. This can only have been because the Board did not agree with the petitioner. If the petitioner thought it needed to make further submissions it should have asked for the debate to be reopened. It did not do so. If it thought nevertheless that its right to be heard had in some way been infringed it could have raised an objection under Rule 106 EPC. It did not do so. To the extent that the petitioner was not told of the Board's reasons for refusing these requests at the oral proceedings, the case law of the Enlarged Board has repeatedly emphasised that it is not an aspect of the right to be heard under Article 113(1) that a party is entitled to know in advance of the reasons why a board intends to reject a request (see e.g., decision R 12/09 of 15 January 2010 (point 11 of the Reasons). This fact could therefore not constitute an infringement of the right to be heard. Even if the petitioner only learnt that the Technical Board had agreed with Opponent 2's arguments when it received the written reasons, the petitioner accepts that these reasons fully accorded with Opponent 2's arguments, being arguments which the petitioner had had the opportunity to answer and had in fact answered. As the Enlarged Board has said many times, the fact that the petitioner considers the Technical Board's reasons are wrong is wholly irrelevant. See, e.g., decision R 2/08 dated 11 September 2008, Point 8.2 of the Reasons.

4.5 As regards this complaint, therefore, and whichever way the matter is looked at, even if the petition were not clearly inadmissible it is clearly unallowable.

5. Complaint No. 4: Violation of the right to he heard in terms of non-admission of the Auxiliary Requests III.2 and III.3

5.1 In respect of this complaint the petitioner raised an objection under Rule 106 EPC which corresponds to the objection now raised. The Technical Board dismissed the objection for reasons set out at point 11 of its written decision. As regards this complaint, therefore, the petition is admissible.

5.2 The Technical Board refused to admit these requests relying on the discretion referred to in Article 12(4) RPBA. The opening words of this article state:

"(4) Without prejudice to the power of the Board to hold inadmissible facts, evidence or requests which could have been presented or were not admitted in the first instance proceedings, ..."

5.3 In the petition it was said that these requests were different from the second auxiliary request withdrawn before the Opposition Division and it was pure speculation to say, as the Technical Board did, that they could have been presented during those proceedings.

5.4 It is correct that these requests did not correspond exactly to the second auxiliary request which was withdrawn before the Opposition Division. However, they are clearly based on this request and contain the crucial combination of two features that the splines are flush with the outer peripheral surface of the axle body and do not extend radially outwardly relative to the outer peripheral surface of the axle body. The Technical Board also took account of this point (see the Technical Board's decision, point 6). However, it is not necessary to go into the issue further since in reality it is not disputed that auxiliary requests III.2 and III.3 could have been presented before the Opposition Division. In cases where the discretion not to admit requests is exercised by a Board in reliance on this part of Article 12(4) RPBA it is inevitably a matter of speculation whether and in what circumstances the party would have filed such requests. Such speculation is however irrelevant as regards the existence and exercise of the discretion and the Technical Board quite correctly did not enter into such speculation. In reality it is not therefore in dispute that the Technical Board had jurisdiction not to admit the requests.

5.5 The point about the admittance of these requests had been raised in the Technical Board's communication and the petitioner was heard on it at the oral proceedings. The Enlarged Board has repeatedly pointed out that in such circumstances a petition for review cannot be used as a means of reviewing the way in which a judicial body such as a Board of Appeal has exercised its discretion in relation to a procedural matter: see decision R 10/09, dated 22 June 2010, point 2.2 of the Reasons, and decision R 11/11, dated 9 November 2011, point 8 of the Reasons.

5.6 In the course of the oral proceedings before the Enlarged Board the petitioner also emphasised that these requests, with the additional features added to those of the second auxiliary request withdrawn before the Opposition Division, solved all the objections by the Board to its previous requests. However, it was not suggested that the petitioner did not present or was prevented from making this argument to the Technical Board. To the extent that it was a relevant consideration therefore the petitioner had the opportunity to be heard on the point.

5.7 As regards this complaint, therefore, it is clearly unallowable.

6. Conclusion

The petition is clearly unallowable to the extent that it is not clearly inadmissible.

Entscheidungsformel

ORDER

For these reasons it is decided that:

The petition is rejected as being clearly unallowable to the extent that it is not clearly inadmissible.

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R 0004/13 25-07-2013