a) Aucune possibilité de prendre position, motifs surprenants 

Résumé

In R 8/19 the petitioner (opponent 1) claimed that its right to be heard had been fundamentally violated. It had allegedly only learnt from the written reasons of the decision that, when acknowledging inventive step with respect to auxiliary request 1, the board had redefined the objective technical problem; and the board had allegedly done this in a completely unexpected manner. The petitioner argued that unless an opponent knew how the problem was being defined, it was impossible to present arguments on inventive step.

First of all, the Enlarged Board of Appeal (EBA) recalled that decisions of a board of appeal may only be based on grounds or evidence on which the parties have had an opportunity to present their comments (Art. 113(1) EPC) and a party must not be taken by surprise by the reasons for the decision referring to unknown grounds or evidence. The right to be heard is observed if a party has had the opportunity to comment on the decisive considerations and the relevant passages of the prior art on which a decision is based (see e.g. R 16/13). On the other hand, the board must be able to draw its own conclusion from the discussion of the grounds put forward (R 8/13, R 16/13). Thus, the right to be heard does not go so far as to impose an obligation on a board to disclose to the parties, in advance, how and why, on the basis of the decisive issues under discussion – or at least those foreseeable as the core of the discussion – it will come to its conclusion. This is part of the reasoning given in the written decision (R 1/08, R 15/12, R 16/13).

In the present case, a cornerstone of the board's inventive step reasoning with respect to claim 1 of auxiliary request 1 was the construction of the objective problem to be solved by the claimed subject-matter. While not following the proprietor's and petitioner's views, the board had considered that the objective problem solved was the provision of a pharmaceutical formulation with a zero order release profile.

According to the EBA, whether the board's reliance on an objective problem that had never been mentioned to the petitioner amounted to a fundamental violation of the right to be heard could not generally be answered in the affirmative. The EBA argued that the right to be heard in the context of the problem-solution approach meant that there should normally have been a discussion on the relevant prior art, the differences between the prior art and the claimed invention, and the technical relevance of these differences. Within the framework of what had been addressed in the course of these discussions, the deciding organ should be free to apply the problem-solution approach as it sees fit, and even identify an objective problem that had not been explicitly spelled out as such during the proceedings. In any case, the objective problem eventually used in the reasoning had to be based on technical effects (or the lack of any) and the features of the invention causally linked to such effects, upon which the parties had had an opportunity to comment.

With respect to auxiliary request 1 and the board's decision on inventive step, which had given rise to the petition, the EBA concluded that the board had based its decision only on grounds that had been objectively foreseeable by the parties, in view of their submissions and the board's statements during the appeal proceedings.

The EBA reasoned that during the entire proceedings leading to the decision under review, the zero order release profile – the provision of which had been eventually adopted by the board as the objective technical problem – had been discussed, either as a quality of the erosion matrix or as a feature that was desirable per se. According to the file, the discussion on the main request had covered the zero order release profile in connection with the disputed distinguishing feature, the erosion matrix. Not only the problem eventually used in the context of auxiliary request 1 (to achieve a zero order release profile) but also the solution (the use of a water-soluble polymer) had been explicitly discussed in the context of the main request. The EBA held that the facts and evidence underlying the board's decision on auxiliary request 1 had been discussed in a way that had given the petitioner sufficient opportunities to be heard.

The EBA concluded that no fundamental violation of Art. 113 EPC had occurred, since the parties had had the opportunity to comment upon the grounds and evidence on which the decision under review was based, in particular, on the additional limiting feature of auxiliary request 1 and the technical effect eventually used by the board in its application of the problem-solution approach.