Delta Patents

T 0231/13 - no inventor needed, a professional representative is enough

Delta Patents Patent Law -


At the opening of the oral proceedings their postponement was requested, because one of the inventors, who wished to accompany the professional representative, could not be present due to serious illness that required medical intervention. This was proven by a medical certificate dated 28 July 2017 and filed during the oral proceedings. The applicant submitted that the request for postponement could not have been made before because the need for medical intervention had been sudden and the representative had been informed of it only the evening before the oral proceedings. The Board denied the request, as it was not made as soon as possible, and because the party was duly represented. 

Summary of Facts and Submissions

I. The applicants have appealed the Examining Division's decision, dispatched on 7 August 2012, to refuse European patent application No. 05 764 574.9.

II. The Examining Division held that claim 1 of the main request did not comply with Articles 84 and 83 EPC, because its subject-matter was neither clear nor sufficiently disclosed. More particularly, the defined "sample size" and its determination according to the claim were objected to. Claim 1 of the auxiliary request contained subject-matter extending beyond the content of the application as originally filed, in contravention of Article 123(2) EPC.

III. Notice of appeal was received on 1 October 2012. The appeal fee was paid on the same day. The statement setting out the grounds of appeal was received on 7 December 2012.

IV. The Board summoned the appellant to oral proceedings. In the communication accompanying the summons the Board set out its preliminary opinion. It raised objections of lack of clarity of the subject-matter of claim 1 of the main request and auxiliary request 2, in particular in relation to steps concerning the determination of a "sample size and calculated relative error", and lack of inventive step of the subject-matter of claim 1 of auxiliary request 1 as then pending.

V. Oral proceedings took place on 1 August 2017.

[...]

At the opening of the oral proceedings the appellant requested their postponement, due to serious illness of one of the inventors who wished to attend.

VI. Claim 1 as originally filed, which corresponds to claim 1 of the main request on which the impugned decision is based, reads as follows:

[...]

VII. The appellant's arguments may be summarised as follows:

Request for postponement of the oral proceedings

At the opening of the oral proceedings their postponement was requested, because one of the inventors, who wished to accompany the professional representative, could not be present due to serious illness that required medical intervention. This was proven by a medical certificate dated 28 July 2017 and filed during the oral proceedings. The request for postponement could not have been made before because the need for medical intervention had been sudden and the representative had been informed of it only the evening before the oral proceedings.

[...]

Reasons for the Decision

1. The appeal is admissible.

2. The invention

[...]

3. Request for postponement of the oral proceedings

At the opening of the oral proceedings the appellant requested their postponement, due to serious illness of one of the inventors who wished to attend.

Under Article 15(2) RPBA, "A change of date for oral proceedings may exceptionally be allowed in the Board's discretion following receipt of a written and reasoned request made as far in advance of the appointed date as possible." The notice of the Vice-President of Directorate-General 3 of the European Patent Office dated 16 July 2007 concerning oral proceedings before the boards of appeal of the EPO (Official Journal EPO 2007, Special edition No. 3, 115) explains in more detail how it can be expected that this discretion is exercised. In particular, for a request of a change of date to be allowed the party should advance serious reasons. The request should be filed "as soon as possible after the grounds preventing the party concerned from attending the oral proceedings have arisen". Examples of serious reasons are given under point 2.1 of that notice.

The aim of the above provisions is to fulfil the need for procedural economy while ensuring that the party can be duly represented during the oral proceedings.

The Board notes that the appellant was duly represented by the professional representative of its choice. Article 133(2) EPC specifically requires such a representation for persons not having their residence or principal place of business in a contracting state to the EPC, who must act through the representative. The attendance of one of the inventors is not relevant for discussion of formal and substantive points in oral proceedings, unless special issues arise, for example in connection with a particular technical point. In the present case, the representative did not put forward any such special issues and the Board cannot see any either. In this context, it is stressed that the above-mentioned notice expressly refers to grounds preventing the party concerned, i.e. its appointed representative - not other accompanying persons - from attending.

The Board further notes that although the medical certificate attesting the illness is dated 28 July 2017, the request was only filed four days later, at the last possible point in time, i.e. during the oral proceedings themselves. No reasons were provided why the representative was only informed in the evening of the day before the oral proceedings that the inventor was unable to attend. Hence, it has to be concluded that the request for postponement was not made "as far in advance of the appointed date as possible" within the meaning of Article 15(2) RPBA.

In view of these circumstances, the Board concludes that the need for procedural economy and legal certainty for the public outweighs the present personal wish of one of the inventors to attend, and exercises its discretion not to allow the postponement.

4. Admissibility of the main request

The main request was only filed during the oral proceedings. This constitutes an amendment to the appellant's case, the admission of which is at the Board's discretion under Article 13(1) and (3) RPBA.

According to Article 13(1) RPBA, "the discretion shall be exercised in view, inter alia, of the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy". Moreover, under Article 13(3) RPBA, "Amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues which the Board [...] cannot reasonably be expected to deal with without adjournment of the oral proceedings." Another important criterion for assessing the admissibility of amendments to a party's case, according to the established jurisprudence of the boards of appeal, is their prima-facie relevance.

The Board notes that the main request was filed at the last possible point in time, without any objective reason for doing so. The outstanding objections to the requests already on file were known by the appellant from the impugned decision and the Board's communication accompanying the summons to oral proceedings. The appellant's argument that an important aspect of the invention had only come to light in a recent discussion with one of the inventors cannot be accepted, as it depends on merely subjective circumstances under the appellant's control.

It is further noted that, compared with the requests already on file, the main request comprises several substantial amendments, including a change in claim category from a process to a device. Hence, the examination of its subject-matter, especially in view of the requirements of Article 123(2) EPC concerning added subject-matter, would entail a relatively high degree of complexity, possibly requiring an adjournment of the oral proceedings.

Lastly, the amendments are not prima facie relevant, since the steps concerning the determination of a "sample size and calculated relative error", still present in claim 1 of the main request and objected to in the communication accompanying the summons to oral proceedings, remain unclear. The appellant's argument that it was clear that those steps were performed by the claimed microscope is not convincing, since the claim, in one alternative designated "personalized sample", specifically contemplates that "an ideal sampling of said eye corresponding to said corneal endothelial cell analyzed samples is defined by the user".

For these reasons the Board does not admit the main request into the proceedings under Article 13(1) and (3) RPBA.

5. Clarity and sufficiency of disclosure of auxiliary request 2

[..]

As regards the appellant's argument that it was surprising that the application had been refused by the EPO but not in China, Japan and the US, the Board notes that it has to decide on the basis of the provisions of the EPC, which may differ from those of other texts. Decisions of other patent offices, possibly taken on the basis of different claim versions, are in any case not binding on the Board.

In summary, auxiliary request 2 is not allowable.

6. Inventive step of auxiliary request 1

[...]

Since, as explained above, the other features of the claim do not contribute to inventiveness, the subject-matter of claim 1 of auxiliary request 1 cannot be allowed for lack of inventive step (Article 56 EPC).

The appellant argued that displaying the defined graphics, possibly on a single screen, was a technical feature, because it enhanced the conveying of information to the user. It suffices to note that the expression "convey of information" can only be considered a synonym for "presentation of information", which, as explained, provides no technical character.

Lastly, as explained in point 5 above, whether auxiliary request 1 was allowed in the US has no bearing on the present decision.

Order

For these reasons it is decided that:

The appeal is dismissed.

This decision T 231/13 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:T023113.20170801. The file wrapper can be found here. Photo "Wandering around post-postponement." by Nick Quaranto obtained via Flickr under CC BY-SA 2.0 license (no changes made).

T 1204/12 - Stern but fair?

Delta Patents Patent Law -

The city 'Brusque' in Brazil

In this examination appeal, the invention relates to the entering and setting of an 'availability status' in a 'Push-to-talk' application in a mobile communication device, with the independent method claims defining the associated data processing. Unfortunately for the applicant-now-appellant, the Board of Appeal quickly 'strips away' the semantic meaning of the data (e.g. 'alert status') and the data processing entities ('server', 'communication device'), to conclude that the invention merely pertains to 'storing/transmitting the data on/to different computers'. Any remaining feature+effect combinations are swept off the table as 'obvious'.

The claim of the main request:

1. A method of establishing a user communications availability in an application (206) operative on a mobile communications device (200), the method comprising:

determining an alert status associated with the mobile communications device (200);

responsive to the determination of the alert status being in a first state, presenting to a user a first plurality of options, each of the first plurality of options corresponding to establishing the user communication availability in the application with a status applicable to said application (206);

responsive to the determination of the alert being in a second state, presenting to the user a second plurality of options having at least one option different from the first plurality of options, each of the second plurality of options corresponding to a user communication availability with a different status applicable to said application (206);

receiving a selection from the user of an option from said first or second plurality of options;

responsive to said selection of the option from said first or second plurality of options, auto­matically establishing and setting, at the mobile communications device, the status of the user communication availability in said application (206) in accordance with the status corresponding to the selected option; and

sending the status of the user communication availability in said application to a server (114), wherein the sending causes the server (114) to transmit an availability status representative of the status of the user communication availability in said application to at least one other mobile communications device associated with said application.

Reasons for the Decision
1. Summary of the invention

The application relates to entering and setting a user communication availability status for a push-to-talk application (PTT app 206, see figure 5) in a mobile communication device 200 (e.g. a PDA, a smart phone or a PC; see original description, [20]). Push-to-talk is a server-based voice communication system for a group of users over a packet-switched network such as GPRS (see for example https://de.wikipedia.org/wiki/Push-to-Talk_ over_Cellular).

The PTT app 206 in the mobile communication device 200 is the client-side software for this service. Its login availability module 232 ([48], last sentence) prompts the user for his/her communication availability status ([62]-[64]). The possible status values are "available", "do not disturb" and "silent/non-audible" (see original claims 7-9, [63] and figure 6, S45 and S26; in the original claims, the user communication availability status is called the "application state").

The claims relate to the second embodiment ([60]-[69]; figures 5 and 6). The user initially sets a ringer or alert status either to "audible/ring" or "non-audible/silent" ([19] and [61]). Depending on this ringer/alert status, only two of the three options are presented for selecting the user communication availability status. If the ringer/alert status is "ring", then "silent" is not presented as a selectable option for the user communication availability status ([63]; figure 6: S24). If the ringer/alert status is "silent", then "available" (corresponding to "ring") is not presented ([63]; figure 6: S26).

If the status has changed, it is set in the availability manager 230 ([48], last sentence) of the PTT app 206 in the mobile communication device 200, transmitted to a PTT exchange server 114 and set therein ([66]; figure 5: 232, 234; figure 6: S32, S34, S36).

According to the state, PTT server 114 routes an incoming call for the user of the mobile communication device 200 directly to it (if the status is "available"; [45]), it asks whether the client user would like to accept the call ("silent"; [45]) or automatically rejects the call ("do not disturb"; [46]). However, neither the PTT server nor its routing behaviour are claimed.

2. Inventiveness of claim 1 of the main request

2.1 The appealed decision (section 4) selected as the closest prior art an example of a PTT application residing in a cellular telephone, as acknowledged in the description ([10] and [11]).

2.2 However in the board's opinion, the invention as claimed does not relate to PTT communication as such but merely to an input-/output-process. It is unnecessary to take into account the semantics of the data entered by the user (i.e. of the user communi­cation availability status or alert status), since there is no step of a PTT communication being triggered by the data in any of the claimed method steps following the entry of the data. The claim mainly relates to inputting this data, in particular by presenting to the user a selection of possible options depending on a previously entered setting (the alert or ringer status of the mobile communication device; see [19] and [61]).

2.3 However, inputting this data does not produce any other technical effect than storing/transmitting the data on/to different computers.

2.4 In the grounds of appeal (page 3, paragraphs 8 and 9), it is argued that presenting only valid options for selecting the user communication availability status depending on the previously entered alert status reduces the number of gestures required to alter the user communication availability status.

2.5 However, such a reduction of input gestures only occurs when the user tries to input an invalid value. He or she would then have to repeat the selection (possibly after a warning message).

2.6 The board considers it to be obvious for a skilled person to design the method so that only valid options are presented, in order to avoid an invalid selection by the user. Presenting only valid options is a usual practice for the skilled person in programming.

2.7 Therefore, claim 1 of the main request is not inventive (Article 56 EPC).

3. Inventiveness of claim 1 of the auxiliary request

3.1 Claim 1 of the auxiliary request differs from that of the main request in that the mobile communication device tests whether the newly entered status is the same as the old status, which has previously been received from the server storing the status. The new status is only stored and transmitted if it is different from the old status.

3.2 In the letter dated 18 August 2017 (last page), the appellant argues that this reduces network traffic and processing at the other mobile communication device.

3.3 However, the board considers it obvious to the skilled person not to update (i.e. transmit and store) data which has not changed.

3.4 Therefore, claim 1 of the auxiliary request is also not inventive (Article 56 EPC).

Order

For these reasons it is decided that:

The appeal is dismissed.

This decision T 1204/12 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:T120412.20170920. The file wrapper can be found here. Photo "Brusque1.jpg" released by the author into the Public Domain and obtained from Wikimedia

T 2016/16 - All due care: assistant well-trained but not properly instructed/ not properly supervised by the patent attorney

Delta Patents Patent Law -

The applicant timely filed a notice of appeal and paid the appeal fee. However, the applicant missed the 4-month period to file the grounds of appeal, because the 4-month period had never been recorded in the internal electronic docketing system.  With the late-filed statement of grounds, the applicant filed a request for re-establishment of rights in respect of the time limit for filing the statement of grounds of appeal was filed and the prescribed fee was paid. A well-trained, competent and experienced assistant, who has the CIPA Patent Administrator Qualification had overlooked to record the 4-month period and the responsible patent attorney did not think to check whether the period for filing the grounds of appeal had been logged in the docketing system. The Board concluded that, even with a system of double checking in place, the representative is not discharged from his or her duty to properly instruct and supervise the assistant (cf. T 1465/07, reasons 18, last paragraph). In the case at hand, the appellants have not shown that the assistant was properly instructed or that she was properly supervised. Thus, the appellants have not discharged their burden to prove the existence of a normally satisfactory monitoring system. The omission from the docketing system of the time limit for filing the statement of grounds can therefore not be said to equate to an isolated mistake in a normally satisfactory monitoring system. The request for re-establishment of rights is to be refused.

Summary of Facts and Submissions

I. The appellants (applicants) lodged an appeal against the decision of the examining division to refuse application No. 10 817 590.2. The impugned decision was posted on 16 March 2016.

II. The appellants filed a notice of appeal on 20 April 2016 and paid the prescribed fee on the same day.

III. The statement of grounds of appeal was filed on 22 August 2016. On the same day, a request for re-establishment of rights in respect of the time limit for filing the statement of grounds of appeal was filed and the prescribed fee was paid. With the statement of grounds of appeal, the appellants filed a main request and an auxiliary request.

IV. The appellants were summoned for oral proceedings.

V. The board issued a communication pursuant to Article 15(1) RPBA. In its preliminary opinion, it stated that the request for re-establishment of rights appeared to be admissible but it also appeared to be unfounded in particular because no evidence had been filed.

VI. The appellants filed a copy of a CIPA Patent Administrator Qualification certificate issued in the name of Ms S.

VII. In their letter dated 7 September 2017, the appellants informed the board that their representative would not be attending the oral proceedings.

VIII. In a telephone conversation on the same day, the rapporteur of the board informed the appellants' representative that, according to the board's preliminary opinion, the request for re-establishment should be refused. The representative confirmed that the appellants' letter of that day was not to be construed as a withdrawal of the appeal.

IX. Oral proceedings before the board took place in the appellants' absence.

X. The appellants' arguments, as far as relevant for the present decision, may be summarised as follows:

The time limit for filing the statement of grounds of appeal was not entered in the docketing system used by the representative's firm. The failure to observe the time limit for filing the statement of grounds of appeal came to light after the representative's client raised a query regarding an invoice on 15 August 2016.

Normally, incoming post is checked every day and time limits are recorded in the internal electronic docketing system. The time limits set by any incoming communications are generally identified and recorded by a well-trained, competent and experienced assistant, who has the CIPA Patent Administrator Qualification and who normally performs her duties satisfactorily. The incoming communications are then brought to the attention of the attorneys working on the case and the relevant time limits are double checked. In the present case, the assistant, Ms S., only entered the first, two-month deadline for filing the notice of appeal in the docketing system on receipt of the decision. The appellants' representative, Ms F., was independently monitoring the case for the issuance of the decision and reviewed the docketing system once the decision had been received. However, the representative, when reviewing the case and the newly received decision, also overlooked the omission of the second, four-month deadline for filing the grounds of appeal. When filing the notice of appeal she did not think to check whether the period for filing the grounds of appeal had been logged in the docketing system as deadlines were recorded on receipt of the communication that sets them, i.e. the impugned decision, and not on the completion of other deadlines to do with the same case. The failure to record the relevant deadline in the system was an isolated mistake in an otherwise satisfactory system. The request for re-establishment should therefore be granted.

XI. The appellants requested the re-establishment of rights in respect of the time limit for filing the statement of grounds of appeal. The appellants also requested that the contested decision be set aside and that a patent be granted based on the claims of the main request as filed with the grounds of appeal. In the alternative, they requested the grant of a patent based on the auxiliary request filed with the statement of grounds of appeal.

Reasons for the Decision

1. The decision under appeal was posted on 16 March 2016 and was deemed to have been delivered on 26 March 2016 (Rule 126(2) EPC). The time limit for filing the statement of grounds of appeal, therefore, expired on 26 July 2016 (Article 108, third sentence and Rule 131(4) EPC). Thus, the statement of grounds of appeal filed on 22 August 2016 was not filed within the prescribed time limit. The non-compliance with the time limit has the effect that the appeal is to be considered as inadmissible. Re-establishment of rights is available in this situation (Article 122(1) EPC).

2. According to the appellants' submissions, the failure to observe the time limit for filing the statement of grounds of appeal came to light after the representative's client raised a query regarding an invoice on 15 August 2016. The cause of non-compliance with the time limit under Article 108, third sentence, EPC can therefore be considered to have been removed on that day. The two-month time limit for filing the request for re-establishment of rights in writing (Article 122(2) and Rule 136(1) EPC) was therefore observed by filing the request for re-establishment of rights on 22 August 2016. On the same day, the omitted act, i.e. the filing of the statement of grounds of appeal, was completed and the fee for re-establishment was paid. Furthermore, the request for re-establishment of rights states the grounds and facts on which it is based (Rule 136(2) EPC).

Hence, the request for re-establishment of rights is admissible.

3. The appellants have however not shown that all due care required by the circumstances was taken to comply with the time limit (Article 122(1) EPC).

3.1 In the case at hand, the appellants submit that the failure to comply with the missed time limit resulted from the erroneous omission of the time limit from the docketing system by an assistant and the failure of the representative to identify this omission.

3.2 In the case of non-observance of a time limit due to an error, the boards of appeal have established the criterion that due care is considered to have been taken if non-compliance with the time limit resulted either from exceptional circumstances or from an isolated mistake within a normally satisfactory monitoring system (Case Law of the Boards of Appeal (hereinafter "CLBA"), 8th ed., III.E.5.2., penultimate paragraph). It is the appellants' contention that the present case amounts to such an isolated mistake.

3.3 The party requesting re-establishment of rights bears the burden of making the case and proving that the requirements are met (CLBA supra, III.E.5.2., last paragraph). Thus, in the present case the appellants bear the burden of proof to show the existence of a normally satisfactory monitoring system.

3.4 The representative may entrust to an assistant the performance of routine tasks provided that the necessary due care on the part of the representative has been exercised in dealing with the assistant. In this respect, it is incumbent upon the representative to choose a suitable person for the work, to properly instruct that person in the tasks to be performed and to exercise reasonable supervision over the work (CLBA supra, III.E.5.5.4b)).

3.4.1 According to the appellants' submissions, the assistant was a "well-trained, experienced assistant, who has the CIPA Patent Administrator Qualification". The only evidence provided by the appellants in this respect is a copy of the CIPA Patent Administrator Qualification certificate awarded to Ms S., the assistant to the appellants' representative, in 2009. While this document certainly can serve as proof of Ms S.'s suitability to perform the routine tasks in question, the appellants have not provided any evidence regarding the alleged "normally satisfactory monitoring system" of the representative's firm, i.e. any proof that would suggest that Ms S. had been properly instructed to perform tasks relating to appeals before the Boards of Appeal of the EPO and in particular relating to their handling in the firm's docketing system. In particular, there is no evidence on file that would suggest that the assistant had been instructed to enter not only the two-month time limit for filing the notice of appeal in the docketing system but also the four-month time limit for filing the statement of grounds of appeal. In this respect, the board also notes that the appellants' contention that the assistant normally performed her duties satisfactorily is not supported by corroborating evidence.

3.4.2 The appellants also submit that the time limits entered by the assistant in the docketing system are normally double checked by a patent attorney. In the case at hand however, the representative, Ms F., who was in charge of this double check, also overlooked the omission in the docketing system of the time limit in question.

The board observes that, while an independent cross-check of time limits is normally required in the case of large patent attorney firms (CLBA supra, 5.4.4) and in the present case the representative's firm can be considered not to be such a large firm, even with such a system of double checking in place, the representative is not discharged from his or her duty to properly instruct and supervise the assistant (cf. T 1465/07, reasons 18, last paragraph). In the case at hand, the appellants have not shown that the assistant was properly instructed or that she was properly supervised (cf. 3.4.1 supra).

3.4.3 Thus, the appellants have not discharged their burden to prove the existence of a normally satisfactory monitoring system. The omission from the docketing system of the time limit for filing the statement of grounds can therefore not be said to equate to an isolated mistake in a normally satisfactory monitoring system.

The question as to whether the representative herself should have noticed, when preparing the notice of appeal, that the time limit for filing the grounds of appeal was not registered in the docketing system need not therefore be addressed.

3.5 For these reasons, the request for re-establishment of rights is to be refused.

3.6 As the statement of grounds was filed after the time limit under Article 108, third sentence, EPC had elapsed, the appeal is to be rejected as inadmissible (Rule 101(1) EPC).

Order

For these reasons it is decided that:

1. The request for re-establishment of rights is refused.

2. The appeal is rejected as inadmissible.


This decision T 2016/16 (pdf) has European Case Law Identifier: ECLI:EP:BA:2017:T201616.20170913. The file wrapper can be found here. Photo "A little luck - Close-up of a small paper four-leaf clover that my daughter and I made." by JD Hancock obtained via Flickr under CC BY 2.0 license (no changes made).

Guidelines November 2017

Delta Patents Pre-Exam -

A pre-publication of Guidelines for Examination November 2017 is available on the EPO website, as well as of the Guidelines for Examination at EPO as PCT authority.
The HTML-pages also contain a page with a list of changes (at the bottom of the left column)

The final version, available as of 1 November 2017, will be the relevant version for EQE 2018 (Pre-Exam and Main Exam).

Guidelines November 2017

Delta Patents paper D -

A pre-publication of Guidelines for Examination November 2017 is available on the EPO website, as well as of the Guidelines for Examination at EPO as PCT authority. 
The HTML-pages also contain a page with a list of changes (at the bottom of the left column)

The final version, available as of 1 November 2017, will be the relevant version for EQE 2018 (Pre-Exam and Main Exam).



R 2/15 - Suspected partiality of a deputy of the vice president

Delta Patents Patent Law -

It's all about the right to be heard.


In review case R 19/12 it was decided that an objection of suspected partiality against the chairman of a board of appeal may be based on his capacity as vice president. Can such an objection of partiality also be raised if during the course of the appeal proceedings, the chairman is or was deputy of the vice president? Can you ask the members of a board it they have been a deputy of the vice president?  This case also confirms that a petition for review can concern an interlocutory decision

The petitioner claims his right to be heard has been violated numerous times. These include:

-During the oral proceedings before the board of appeal, the objected to chairman handed out a statement which said that the chairman did not wish to make comments. 

- The petitioner had asked for an interruption of the Oral Proceedings of an hour, but got only half an hour. The petitioner also requested return to written proceedings, which was denied. .

- The board rejected the objection of partiality on the basis that the scope of a deputy's responsibilities are more limited than that of a vice president. Petitioner alleges this was not communicated to the parties prior to the decision.

An earlier decision in this case also featured on this blog.  


Reasons for the Decision
Admissibility
1. Article 112a(1) EPC
The petitioner is adversely affected by the decision to be reviewed, since its objection of suspected partiality against the chairman of the Board in its original composition was refused. The requirement of Article 112a(1) EPC is therefore fulfilled.
2. Petition against an interlocutory decision
2.1 The petition concerns an interlocutory decision dealing with objections of suspected partiality raised against the Board’s chairman. Although this decision was not concerned with the substantive issues that were the subject of the appeal, but with a preliminary issue regarding the lawfulness of the composition of the Board, it was final in the sense of constituting res judicata for this issue, decided upon by the Board in its alternate composition.
2.2 Petitions for review of interlocutory decisions are not generally inadmissible, as already implicitly recognised in R 5/08 of 5 February 2009, which dealt with a petition for review concerning two such decisions. The Enlarged Board sees no reason to assume, in the absence of an express provision, that Article 106(2) EPC, which stipulates that a decision which does not terminate proceedings as regards one of the parties can only be appealed together with the final decision, unless the decision allows a separate appeal, is also to be applied to the petition for review procedure. Neither Article 112a EPC itself nor its implementing regulations (Rules 104 to 110 EPC) contain a provision corresponding to Article 106(2) EPC.
2.3 Moreover, Article 106(2) EPC, which concerns the ordinary legal remedy of appeal, cannot be applied analogously to the extraordinary remedy of petition for review, for the following reasons. Because the admissibility of a legal remedy is such a fundamental issue, any restrictions to it must be clearly laid down in the law. This holds all the more true for the petition for review procedure, due to the fact that it is an extraordinary means of redress and has its own specific admissibility requirements. The wording of Rule 109(1) EPC, which refers in general terms to the provisions relating to proceedings before the boards of appeal, is therefore not to be understood as encompassing a reference to the provisions governing admissibility.
2.4 It follows from the above that the Enlarged Board is unable to identify any reason to apply, to petitions for review of interlocutory decisions, the same restrictive approach to admissibility that is applied to appeals.
2.5 Accordingly, the fact that the present petition is concerned with an interlocutory decision does not render it inadmissible.
3. Article 112a(2) EPC
3.1 A petition may only be filed on the grounds stated in Article 112a(2) EPC in conjunction with Rule 104 EPC. The present petition alleges fundamental violations of the right to be heard according to Article 113(1) EPC (see section IX(1)(a) to (e) above) in connection with the ground specified in Article 112a(2)(c), and a failure on the part of the Board to deal with a request submitted by the petitioner (see section IX(1)(c) and (2) above) in connection with one of the fundamental procedural defects defined in Article 112a(2)(d) in conjunction with Rule 104 EPC.
3.2 Although it did not expand on this point at the oral proceedings, the petitioner had maintained in its written submissions that the present review proceedings were also an opportunity to look at the substance of the decision, because the Board's lawful composition was a prerequisite for any correct procedure and for compliance with the right to be heard. The Enlarged Board acknowledges that, since the interlocutory decision deals with objections of suspected partiality against a chairman, it unquestionably has consequences of the utmost importance for the proceedings as a whole. Nevertheless, as has been made abundantly clear in the established case law, review proceedings cannot serve as a means to review the merits of a decision (see e.g. R 1/08 of 15 July 2008, point 2.1 of the reasons, and R 13/12 of 14 November 2012, point 2.5 of the reasons). This principle also applies where, as in the present case, the decision to be reviewed concerns the refusal of an objection of suspected partiality. The petition for review is therefore clearly inadmissible in this respect.
4. Article 112a(4) EPC
The petition meets the formal requirements of Article 112a(4) EPC regarding the time limit, payment of the fee, and the filing of a reasoned statement.

5. Rule 106 EPC
5.1 According to Rule 106 EPC, a petition under Article 112a(2)(a) to (d) EPC is only admissible where an objection in respect of the procedural defect was raised during the appeal proceedings and dismissed by the board of appeal, except where such objection could not be raised during the appeal proceedings.
5.2 In so far as the petition is based on the alleged violations set out in section IX(1)(a), (b) and (e) above, the petitioner duly raised objections under Rule 106 EPC (see its objections 1, 2 and 3 reproduced in sections IV and V above).
5.3 As to the alleged violation set out in section IX(1)(d) above, i.e. that the petitioner was unable to comment on the facts underlying the board’s core reasoning relating to the deputy’s limited scope of responsibility, the petitioner maintained that it only became aware of this issue from the written reasons of the decision, and that its petition was also admissible because the alleged violation fell within the exception provided for in Rule 106 EPC.
5.4 Regarding the alleged violations summarised in section IX(1)(c) and (2) above, namely the absence of discussion about the admissibility of the petitioner’s correspondence with VP3 and the failure to decide on a respective procedural request, no relevant objections were raised at the oral proceedings before the board. Accordingly, to the extent that the petition relies on this ground, it is clearly inadmissible. To the extent that this specific objection forms part of the petitioner’s general objection of lack of transparency it will be dealt with in the context of the issues regarding the alleged lack of information (see point 9.5 below).
6. The board therefore concludes that the petition for review is clearly inadmissible in part.
Allowability
7. Overview
As pleaded by the petitioner during the oral proceedings (see section X above), the grounds put forward in support of the present petition for review essentially fall into two groups. The first group concerns the argument that the decision was based on facts and reasons never previously discussed and therefore objectively surprising for the petitioner (see section IX(1)(d) above). The second group encompasses those grounds which revolve around the alleged general lack of transparency and factual information in the appeal proceedings leading to the contested decision, a deficiency purportedly compounded by the conduct of the chairman objected to (see section IX(1)(a) above).According to the petitioner, this conduct not only led to the second objection of suspected partiality under Article 24(3) EPC, which was raised during the oral proceedings, but also prevented it from presenting its case properly. In this difficult situation, the further procedural violations specified in section IX(1)(a), (b), (c) and (e) as well as (2) above allegedly occurred. The Enlarged Board will deal with these grounds in turn.
8. First group of grounds - the surprising nature of the decision deprived the petitioner of its right to be heard
8.1 The petitioner’s argument that it was surprised by and had no opportunity to argue against the crucial reasons of the Board’s decision took the following lines (see also section IX(1)(d) above):
- At no time before or during the oral proceedings had it ever been suggested, let alone argued, by any party or the Board that the deputy for VP3 could be regarded as not being a full deputy, but rather as someone acting within "some specifically limited scope of deputising". The petitioner had therefore assumed that the chairman objected to had deputised for VP3 in the relevant period of time and with unlimited scope. Insofar as the decision held otherwise, it was based on facts the petitioner was not aware of.
- The plain and ordinary meaning of the term “deputy” was a person performing the same duties and under the same obligations as the person he was deputising for. No other meaning could be deduced from the relevant legal provisions. A limited interpretation of the term “deputy” was not only unknown but also completely inconceivable. The petitioner made it clear at the oral proceedings before the Enlarged Board that this had resulted in a new factual background on which it had been unable to comment.
- The petitioner had exhausted all available means of obtaining further evidence establishing the facts of the case. It had thus complied with its obligations in presenting its case.
8.2 As already summarised in section III above, the petitioner had based its first partiality objection against the chairman of the Board (in its original composition) solely on the argument that the reasons of the interlocutory decision in case R 19/12 relating to the suspicion of partiality of VP3 also applied to the chairman objected to if he had acted as VP3’s deputy.
8.3 In deciding on the petitioner’s contention that there was a parallel between VP3’s situation and that of his deputy, the Board took the view that decision R 19/12 focused on the particular duties and obligations of VP3. It therefore assessed whether the chairman objected to, if he had deputised for VP3, was subject to the same obligations as VP3 by virtue of Article 10(3) EPC.
More specifically, in the passages referred to by the petitioner, in particular points 4.3.1 to 5 of the reasons (see also section VI above), the Board based its reasoning on a specific interpretation of Article 10(2) and (3) EPC. It proceeded by deduction and referred to Article 21(1) EPC, stating that the chairman of the Board, like any member of the boards of appeal, was bound only by Article 23(3) EPC, and that the mere fact that he deputised for VP3 in administrative bodies did not mean that he was under the same duty to assist the President of the EPO. This obligation to assist, laid down in Article 10(3) EPC, was incumbent upon VP3 in his capacity as permanent Vice-President. The Board concluded that, even if a chairman could deputise for VP3 in administrative bodies, it was clear from the EPC that the deputy was not a member of the administrative hierarchy of the EPO or subject to the President's authority under Article 10(2)(f) EPC; he was not under the general obligation to assist prescribed by Article 10(3) EPC.
8.4 The core of the Board’s analysis summarised above is of a legal nature, i.e. it relies on legal provisions of the EPC that are accessible to all parties to EPO proceedings, not on any particular factual knowledge about the functioning of the boards of appeal. This also holds true for the Board’s further observation that with respect to review cases the chairman objected to was not in the same position of influence as that enjoyed by VP3 as regular chairman of the Enlarged Board. Indeed, Article 22(2), third sentence, EPC specifically excludes a technically qualified chairman from chairing the Enlarged Board. The petitioner's argument that the Board’s reasoning - paraphrased in the petition by the phrase “some specifically limited scope of deputising” (see the letter dated 11 May 2015, page 10) - was based on facts unknown to the parties therefore cannot be followed.
8.5 Nor is it apparent that the petitioner had no opportunity to put forward its point of view on the functions and duties of VP3 as compared with those of his deputy, including the question of which statutory provisions applied to one and which to the other. According to the minutes of the oral proceedings, this comparison was central to the discussion during the hearing. On page 3 of the minutes it is stated (underlining by the Enlarged Board):
“Taking into account the questions to which extent the functions of the Vice-President of DG3 and a chairman of a technical board of appeal, and the proceedings before the Enlarged Board of Appeal and a technical board of appeal, were comparable, the question whether the objection under Article 24(3) EPC was justified in the light of the findings of the interlocutory decision of the Enlarged Board of Appeal of 25 April 2014 in the case R 19/12 was discussed with the parties. The appellant requested that Question 1 on page 13 of its letter of 19 September 2014 be referred to the Enlarged Board of Appeal (‘Referral question 1’).”
Question 1 on page 13 of the letter referred to in the minutes (see also section III above) reads as follows:
“Question 1: Is an objection under Art. 24(3) EPC against a member of a Board of Appeal justified for the sole reason that, during the course of the appeal proceedings, the objected-to member in addition to the judicial function holds or has held an administrative position in the European Patent Office, provided that such dual function is not required by law, in particular when the objected-to member holds or has held the position of deputy of Vice President in charge of the Boards of Appeal?”
This question had already been formulated in advance of the oral proceedings before the Board and was considered during the oral proceedings - as the minutes make clear - to be the petitioner’s reaction to the comparison of the functions of VP3 and his deputy. It shows that the petitioner was aware, or at least should have been aware, of the possibility that the Board might come to the conclusion that the functions and duties of VP3, on the one hand, and those of his deputy, on the other hand, were legally distinct and that this distinction was of relevance in the context of suspicions of partiality.
8.6 According to the petitioner, the Board never suggested that “a deputy could be regarded as not being a full deputy” and that Article 10(3) EPC applied only to Vice-Presidents, not to their deputies. In support of this argument, the petitioner contested the factual correctness of that part of the decision where the respondents’ arguments were summarised; it also questioned the reliability of the minutes in general on the grounds that they were not sent out until five months after the oral proceedings.
8.7 However, the mere fact that the minutes were issued late does not suffice to call into question the credibility of the above statement made in them. Further, there is no need to look any further into precisely what was stated in the oral proceedings by the Board and the parties and in particular whether or not the petitioner was directly confronted with the argument that - as it put it - a deputy was not a full deputy and had some specifically limited scope of deputising, and that therefore Article 10(3) EPC was not applicable to the deputy of VP3. The reason that there is no such need is that the petitioner - given that it was arguing that the findings in R 19/12 were transferable to the present case - was aware, or at least should have been, that the legal comparison of the duties and obligations of VP3 with those of his deputy was crucial for deciding on the merits of the objection raised under Article 24(3) EPC. It therefore had sufficient opportunity to argue its case.
8.8 The Enlarged Board concludes that no fundamental violation of the right to be heard can be established in respect of the first group of grounds on which the petition is based.
9. Second group of grounds - violations of the right to be heard and fundamental procedural violations which resulted in a lack of transparency and factual information in the appeal proceedings
9.1 Failure to investigate and to provide the information sought by the petitioner
9.1.1 According to the petitioner, by admitting the first objection under Article 24(3) EPC the Board in its original composition acknowledged that it was not devoid of merit. As put forward in “Referral question 2” annexed to the minutes of the oral proceedings and on page 15 of the letter dated 11 May 2015, the Board therefore had to investigate the factual background of the objection, because Article 3(1) RPBA and Article 6 ECHR obliged it to carry out an examination in order to provide evidence known by the Board.
9.1.2 This argument is not convincing. At the stage when the chairman objected to was still a member of it, the Board had to take care not to impinge on the competence of the body deciding on the merits of the objection. The Board in its alternate composition, on the other hand, was fully entitled to assess its merits.
9.1.3 Since the chairman objected to did not participate in the decision under review, his failure to comment in substance on the objection cannot as such constitute a procedural violation committed by the Board in its alternate composition. A procedural violation may reasonably be argued only with respect to the manner in which the Board reacted to this behaviour. The petitioner’s point is that the Board’s dismissal of all its attempts to get information or time to react to the objected-to chairman's failure to comment left it in the dark and thereby improperly limited its right to be heard.
9.1.4 However, as already set out above, the Board was of the opinion that it could reach a decision without any further investigations into the factual circumstances of the objected-to chairman’s deputisation for VP3. It was therefore not obliged to try to clarify an issue which, according to its own legal assessment (the correctness of which is not a matter to be evaluated in review proceedings, see point 3.2 above), was not relevant for the outcome of the proceedings. Furthermore, according to the established case law of the Enlarged Board, a violation of the right to be heard can only be considered as fundamental for the purposes of Article 112a(2)(c) EPC if a causal link exists between the procedural defect and the final decision (see R 1/08, point 3 of the reasons; R 11/09 of 22 November 2010, point 8 of the reasons; R 19/09 of 24 March 2010, point 9.2 of the reasons). There is no such causal link in the present case, since the decision expressly states that the circumstances which, according to the petitioner, should have been investigated had no bearing on the outcome of the appeal proceedings.
9.2 Time allocated to petitioner during oral proceedings
9.2.1 The petitioner alleges that it was not allocated enough time during the oral proceedings to react to the objected-to chairman's refusal to comment. It had requested that the oral proceedings be interrupted for at least one hour, but the Board only interrupted them for 30 minutes. The petitioner raised an objection (“Objection 1”, see section IV above), which was dismissed.
9.2.2 The Enlarged Board notes that the proceedings before the Board (in its alternate composition) took place on two days, i.e. between 10:40 hrs and 18:00 hrs on the first day and between 9:20 hrs and 14:00 hrs on the second day. On both days, the petitioner was given ample opportunity to present its case, including arguments, objections and questions for referral. In particular, it raised a second objection of suspicion of partiality based on the refusal to comment. It has not been argued - and is not apparent from the minutes - that the Board dismissed any of these arguments or objections as belated for not having been submitted immediately after the above-mentioned interruption. Therefore, the Enlarged Board fails to see how the difference in the length of the interruption (30 minutes instead of 1 hour) at this early stage of the proceedings could have affected in any way the decision which was finally taken.
9.2.3 Accordingly, the alleged deficiency cannot amount to a fundamental violation of the petitioner’s right to be heard.
9.3 Refusal to return to written proceedings
9.3.1 The petitioner furthermore maintained that the Board committed a fundamental violation of its right to be heard by refusing to return to written proceedings, since at the oral proceedings the petitioner could not adequately deal with the objected-to chairman’s failure to comment. The petitioner’s position is that a return to written proceedings would have enabled it to submit further relevant case law, in particular decisions of the ECtHR and of national courts supporting its contention that the chairman objected to had a duty to comment in substance and its further argument that its second objection of suspected partiality, based on the refusal to comment, was well-founded.
The petitioner argued during the oral proceedings before the Enlarged Board that the Board had made the wrong decision because - had it been aware of the relevant European and national case law - it would have recognised that it and the objected-to chairman were under an obligation to dispel any doubts. Its decision, according to the petitioner, ignored the ECtHR’s case law on Article 6 ECHR as well as the relevant national case law. There was thus a causal link between the refusal to return to written proceedings and the outcome of the appeal proceedings.
9.3.2 The issue which the Enlarged Board must decide on is not whether the Board made a wrong decision. That would imply an assessment of the merits of the decision and would therefore fall outside the scope of the petition for review procedure (see point 3.2 above). Rather, the crucial issue is whether, prior to the Board’s decision, the petitioner had sufficient opportunity to put forward all its relevant arguments.
9.3.3 The time allocated to the petitioner by the Board to react to the objected-to chairman’s refusal to comment is to be assessed in the context of the case as a whole.
The oral proceedings before the Board in its alternate composition, devoted to a preliminary procedural point, namely the objection under Article 24(3) EPC, and not to the substance of the appeal case, took place on two consecutive days and lasted, with interruptions, more than a full day. As already noted above (point 9.2.2), on both days the petitioner was given ample opportunity to present its case, including arguments, objections and questions for referral.
9.3.4 According to Article 15(6) RPBA, a board of appeal shall ensure that a case is ready for decision at the conclusion of the oral proceedings, unless there are special reasons to the contrary. Thus, whilst it is not out of the question for a board to return to written proceedings, this power has to be exercised with caution and in exceptional circumstances. So the issue is whether the circumstances of the present case were so exceptional that the Board was obliged to return to written proceedings and, by not doing so, fundamentally violated the petitioner’s right to be heard.
As is apparent from the written reasons of the decision (see section VI above), the Board took the view that Article 3(2) RPBA safeguarded the objected-to member’s right to be heard on the objection, by giving him an opportunity to present his comments, but did not impose any general obligation to provide a full response to the objection made. The Board accepted that there might be cases where a board would not be in a position to decide on the objection without obtaining the necessary information from the member objected to, but took the view that this was not such a case. Therefore, no partiality could be inferred from the objected-to chairman’s failure to comment in substance on the objection.
9.3.5 As already stated on a number of occasions above (see points 3.2 and 9.3.2), it is not within the Enlarged Board’s competence in the framework of the present review to decide whether the Board’s view was correct. The only question is whether the Board, to respect the petitioner's right to be heard, should have used its exceptional power to return to written proceedings to give it an opportunity to research the case law, in particular decisions of the ECtHR and national courts, for rulings that might have contradicted the Board’s view and persuaded it to change its mind.
One of the Board’s considerations in deciding not to accede to the petitioner’s request for a return to written proceedings was the content of a letter to VP3, a copy of which had been submitted by the petitioner with its letter of 19 September 2014. In that letter the petitioner noted that, so far, no statement had been made by the member objected to and it cited an English Court of Appeal decision according to which a judge faced with an objection that he should recuse himself on the ground of apparent bias had a duty to disclose relevant information (see annex Pet 11 to the present petition). The Board concluded from the letter that the petitioner, prior to the oral proceedings, had in fact given consideration to the possibility that no detailed answer would be given by the member objected to. The petitioner complained that a letter addressed to VP3 was being used against it, whereas further items of correspondence with VP3 had not been admitted (see point 10 below).
However, there are no grounds for objection if a board, when assessing a request for a return to written proceedings, takes into account the party’s previous behaviour as documented in a submission made prior to the oral proceedings. Nor is it inconsistent with this approach not to admit further correspondence submitted only at the oral proceedings.
9.3.6 For these reasons, it cannot be concluded that, in the procedural circumstances of the case at issue, the Board was obliged to accede to the petitioner’s request for a return to written proceedings to give it an opportunity to research further case law. In this respect, no fundamental violation of the petitioner’s right to be heard has occurred.
9.4 In view of the above, the Enlarged Board concludes that when the Board decided that the lack of detailed information from the chairman objected to did not give rise to the appearance of suspected partiality as alleged, it made a decision on an established fact: the chairman's silence, which it evaluated in the context of the case as a whole, including R 19/12 - which also refers to Article 6 ECHR and ECtHR case law. Having heard the petitioner’s arguments, it did not find it necessary, in order to evaluate the facts it had to decide on, to delay the proceedings and wait for possible guidance from national and European case law that might be submitted by the petitioner. Further, the Enlarged Board concludes that (i) the petitioner had time to express its doubts about whether the chairman objected to had the right to remain silent and about the consequences of this silence, (ii) there was no exceptional circumstance requiring a return to the written proceedings, and (iii) the contention that the silence of the chairman objected to might have been interpreted differently if the Board had been in possession of the national and European case law referred to by the petitioner remains speculative, given all the circumstances taken into consideration by the board in this particular case.
9.5 Non-admission of further correspondence with VP3
9.5.1 In addition to the copy of the enquiry letter already filed with the letter of 19 September 2014, the petitioner submitted two further items of correspondence with VP3 in the course of the oral proceedings, namely a copy of VP3's response to this letter and a copy of a further enquiry letter sent to VP3 on the first day of the oral proceedings (see sections IV and V above and the petition of 3 March 2015, page 8). The Board handed both documents back to the petitioner. The petitioner alleges that this amounted to a failure to decide on its requests that these documents be admitted (Article 112a(2)(d) EPC in conjunction with Rule 104(b) EPC), and that the absence of any discussion of these requests constituted a fundamental violation of its right to be heard (see section IX(1)(c) and (2) above).
9.5.2 Nothing in the minutes contradicts the petitioner’s allegation that the admissibility of the documents was not discussed. The Enlarged Board therefore assumes, at least for the sake of argument, that the parties were not heard on this issue.
9.5.3 However, even leaving aside the fact that the petitioner did not raise any specific objection under Rule 106 EPC in respect of the admission of the correspondence, the Enlarged Board notes that this correspondence was filed in order to (i) demonstrate the lack of information, (ii) justify the petitioner's expectation that the chairman objected to would make a statement disclosing the missing information, and (iii) demonstrate its surprise at the chairman's refusal to comment. Therefore, the reasons set out above regarding the lack of information and the decision coming as a surprise apply here as well, and the Enlarged Board fails to see that any possible causal link has been established between the fact that the Board refused to admit the correspondence, without making any formal decision, and the outcome of the proceedings.
9.6 The Enlarged Board concludes that no fundamental violation of the right to be heard can be established in respect of the second group of grounds on which the petition is based.
10. Conclusion
For the above reasons, the petition is clearly unallowable. It also follows that the fee for the petition cannot be reimbursed.
Order
For these reasons it is decided that:
The petition for review is unanimously rejected as clearly unallowable.
This decision R 0002/15 (pdf) has European Case Law Identifier: ECLI:EP:BA:2016:R000215.20161121. The file wrapper can be found here. Photo by GDJ via PixaBay under a CC0 license (no changes made).



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