R 0005/17 04-03-2019

1. Admissibility

1.1 The petition fulfils the formal requirements for admissibility. The time limits for filing and paying the relevant fee were respected and the requirements of Rule 107(1) and (2) EPC were complied with. The petitioner was adversely affected by the decision.

1.2 It remains to be assessed whether Rule 106 EPC was complied with, requiring a petitioner to raise an objection during the appeal proceedings against the procedural violation that it subsequently invokes in a petition for review. It is uncontested that the petitioner did not raise an objection in the sense of Rule 106 EPC during the oral proceedings. The question is whether the final clause of this rule, namely "except where such objection could not be raised during the appeal proceedings" applies.

1.2.1 The Enlarged Board notes first of all that the alleged procedural violations:

- the failure to decide on the request to admit D19 into the proceedings and

- the violation of the right to be heard of the petitioner on its line of arguments for lack of inventive step of auxiliary request 4, based on D19 as starting point,

occurred during oral proceedings.

The petitioner however argues that the final clause of Rule 106 EPC applies in this case, because the petitioner only realised that the violations had taken place when reading the decision. In particular it only became apparent in the written decision that the Board had not decided on the petitioner's request to admit D19.

1.2.2 In the Enlarged Board's understanding there is in this case a difference between what objectively occurred and what the petitioner subjectively believed had occurred. Neither the minutes of the oral proceedings nor the written decision mention D19, let alone a decision to refuse a request to admit that document. The petitioner requested correction of the minutes one year after they were issued (and also after it had filed its petition for review), but this correction was refused by the Board. On the basis of these official documents from the Board and in the absence of any indication in the file pointing in another direction, the Enlarged Board takes as a starting point for its reasoning that the Board has not taken a decision on the request to admit D19. This is also what the petitioner initially alleged in the petition for review as filed.

1.2.3 On the other hand there is the perception of the petitioner that its request for admission was "implicitly refused" or "not accepted". The first implicit refusal allegedly took place when novelty of the main request was discussed. The petitioner stated: "Manitou comprend que D19 est implicitement rejeté comme n'étant plus pertinent que les documents D1/D2 et D5 déjà présents au dossier" (petition p. 4, §10).

The second implicit refusal allegedly took place in the context of the discussion of the admissibility of auxiliary request 4. "Manitou redemande alors l'autorisation d'admettre les documents nouvellement opposés le 17 février 2017 (dont D19, qui pour mémoire était opposé aux revendications 7 et 8 objet de RS4), mais la CR répond que l'admission de RS4 n'entraîne pas l'admission des nouveaux documents. Manitou comprend donc que la CR maintient son refus d'admettre D19 et qu'elle devra attendre de lire la Décision pour connaître les motifs de ce rejet"(petition p.5,§12).

The position of the petitioner seems to be that, based on its understanding that the request to admit D19 was already refused during the discussion of the main request, the petitioner understood the reaction to its repeated request when discussing the admissibility of auxiliary request 4, as a confirmation or maintenance of the refusal.

The petitioner admits that the Board did not explicitly refuse its request but it alleges that the Board used language that can be characterized as a "périphrase", meaning it used indirect expressions to convey that it actually refused the request.

1.2.4 On the basis of the objective fact that the Board did not decide on the requests and that this occurred during the oral proceedings, it was objectively possible for the petitioner to raise an objection. On that basis the final clause of Rule 106 EPC does not apply and the petitioner should have raised objections.

1.2.5 As concerns the different understanding by the petitioner, the Enlarged Board is not convinced that this is a valid excuse for not raising objections. Even assuming, for the sake of argument, the Board did use language that could be interpreted to imply a refusal when reacting to the request for admission of D19, it is uncontested that the Board did not use the usual expressions for announcing a decision. The petitioner, apparently without asking further clarification from the Board on what it meant with certain expressions or what conclusion the petitioner should draw from the fact that the Board decided on novelty of the main request without consideration of D19, relied for its further strategy on its own interpretation of these expressions and that course of events. It did not further pursue the issue after the discussion on the admissibility of auxiliary request 4 and did not use D19 for its argumentation on lack of inventive step of auxiliary request 4 starting from D19.

1.2.6 This way of handling the situation is not in accordance with what can be expected from a party, who wants to convince a Board of its point of view. As has been considered by the Enlarged Board in R 17/11 (point 19 of the Reasons), it is for the parties to address any point they consider relevant and fear may be overlooked and to insist, if necessary by way of a formal request, that it be discussed. It is not for the Boards to ensure, of their own motion, that all points raised at some point in the proceedings are discussed in the oral proceedings. Reference is also made to CLBA, 8th Edition, IV.F.3.13.7, citing various decisions of the Enlarged Board concerning parties' obligation to participate actively in appeal proceedings.

On the basis of the above it can firstly be expected from a professional representative to note when there has been no formal, explicit decision on its request and to ask for clarification about its status if it seemingly plays no role for the Board. Secondly, there is no indication in the file and the submissions made in the review proceedings, that prior to the two alleged "implicit refusals" a discussion on the merits of the request to admit D19 had taken place. Such a discussion is normally required and the petitioner should have noted its absence. Either it should have protested that it had not had the opportunity to bring its arguments for admission of D19 or it should have queried its own interpretation that the Board had decided. In particular because, as the petitioner has stressed both in writing an orally, it considered D19 to be an extremely relevant document.

The petitioner neither did the one nor the other, but remained passive and simply refrained from using D19 in its further submissions. For this strategy the petitioner cannot make the Board responsible. The responsibility lies with the petitioner and it must bear the consequences of this strategy, which as has become clear from the minutes and the written decision as well as the refusal by the Board to the request of the petitioner to correct the minutes, was based on an incorrect assumption.

1.2.7 The petitioner has argued on the basis of R 14/10 that rather than the petitioner, the Board should have sought clarification in case the request of the petitioner or its status was considered to be unclear. This argument cannot be followed, as it does not appear from the file that the request or its status in the proceedings were unclear for the Board. The unclarity was on the side of the petitioner and resulted from its misunderstanding that the Board had decided on its request. In any case, according to the minutes the Chairman asked at the end of the oral proceedings after reciting the requests of the parties, whether there were any further comments or requests. The petitioner had the opportunity to raise requests or arguments that had not been addressed yet, but it did not use that opportunity.

1.2.8 The petitioner further cited two decisions of the Enlarged Board allowing a petition for review, R 3/10 and R 21/11, in support of its argument that the Board is to be held responsible for the misunderstanding on the side of the petitioner. These cases however deal with different factual constellations. In R 3/10 the Board, after a discussion on novelty, announced that it would deliberate on "patentability" and after deliberation concluded positively on novelty but negative on inventive step. Inventive step was however not discussed. The petitioner was excused for not raising an objection, as it had on the basis of the facts of the case no reason to assume that the Board's decision would address more than what been previously discussed, i.e. novelty. In other words, it could not reasonably be expected to understand that the Board was about to make a mistake. In the case at hand however, it cannot be said that the Board made a mistake and that the petitioner had no reasons to assume that the Board would make this mistake. The petitioner misinterpreted the acts and words of the Board and without further questioning based its strategy on this interpretation. In this context it must be stressed, that it is not unusual for a Board to only address the question of admission of a late filed document, if and when this document becomes relevant. It is therefore not reasonable to interpret the way the Board handled the novelty objection against the main request, as an implicit refusal. It is also not reasonable to interpret the statement by the Board that the admission of auxiliary request 4 (which was the issue under discussion at that point in time) did not imply the admission of late filed documents, including D19, as an implicit refusal. At most it can be said that this statement was possibly ambiguous, in which case the petitioner should have asked for clarification.

In R 21/11 a confusion arose during oral proceedings concerning an expert opinion. Shortly before oral proceedings a second expert opinion from the same expert who had written the first expert opinion was filed. This opinion however did not reach the Board on time. During oral proceedings, confusion arose as the party argued on the basis of both expert opinions, whereas the Board members, who had not received the second opinion, understood the discussion to be about the first opinion. The issue of admission of the second opinion was therefore not decided upon. In that case the confusion or misunderstanding was thus caused by an administrative mishap on the side of the Board which was not visible to the parties, and the petitioner could thus reasonably assume that the Board was aware of the second opinion. The malentendu and the failure to decide became only apparent in the written decision. The current case cannot be compared to this constellation. There was no misunderstanding on the side of the Board, based on circumstances for which the Board was responsible. There was a misunderstanding on the side of the petitioner that cannot be attributed to the Board.

1.2.9 Therefore, the Enlarged Board does not accept the argument of the petitioner that, although objectively an objection could have been raised, it could nevertheless not have been raised because the petitioner subjectively had no reason to raise an objection. As stated above only the petitioner is responsible for this misunderstanding, and thus has to bear the consequences thereof.

2. The Enlarged Board concludes that Rule 106 EPC has not been complied with and the petition has to be rejected as inadmissible.