T 1254/11 Enlarging and reducing the opposition division
In this
decision the board of appeal dealt with enlarging and reducing the opposition
division and changing the chairman. It reviews the case law, discusses who and
in which composition should take the decision and whether or not such decisions
should be public. In this case, the board concludes that the opposition
division made substantial procedural violations but was lawfully enlarged and,
at a later stage, lawfully reduced again. The board therefore decides not the
remit the case back to the opposition division. The board also decides not to
refer the case to the Enlarged Board of Appeal but instead more or less answers
the raised issues.
Catchwords:
1. An
opposition division enlarged to four members pursuant to Article 19(2) EPC 1973
can in principle be reduced again to three members. It is for the four-person
panel to decide on the reduction. In this respect the board concurs with T
990/06. In deciding on the reduction, the opposition division consisting of
four members must properly exercise its discretion. (See point 1.4)
2. The board assumes arguendo that the fact that no decision to enlarge nor a decision to reduce the opposition division was added to the publicly available file and the fact that the appointment of the new chairman could only be traced from the internal register of the EPO both constitute fundamental deficiencies of the proceedings before the opposition division.
However, different from the situation in T 990/06, it is possible to determine from the file that the division was lawfully enlarged and, at a later stage, lawfully reduced again. (See points 1.6 and 1.7)
The board
considers that these circumstances constitute special reasons for not remitting
the case within the meaning of Article 11 RPBA. The aforementioned fundamental
deficiencies assumed arguendo are of a formal nature. They would, in the
board's view, not justify substantially delaying the proceedings. (See point
1.9)
Summary of
Facts and Submissions
I. The
patentee appealed against the decision of the opposition division revoking
European patent No. 1225430.
Opposition
had been filed against the patent as a whole and based on the grounds of
Article 100(a), together with Articles 54(1) and 56 EPC.
The
opposition division held that the ground for opposition mentioned in Article
100(a) EPC, together with Article 54(1) EPC, prejudiced maintenance of the
patent as granted. The patentee had not submitted any auxiliary claim request.
II. Oral
proceedings before the board were held on 17 September 2015.
III. The
patentee requested
1) to set
aside the decision of the Opposition Division dated March 31, 2011 to revoke
European patent EP 1 225 430 ("the Patent") and to remit the case to
the Opposition Division by reason of fundamental deficiencies apparent in the
first instance proceedings (Article 11 RPBA) ("Primary Request");
2) in case
the request in item 1) is not granted, to refer the following questions to the
Enlarged Board of Appeal ("Alternate Request"):
i) May the
composition of an Opposition Division be reduced again during pending
opposition proceedings once it had been enlarged by a legally qualified
examiner in accordance with Article 19(2) EPC?
ii) If the
answer to question (i) is yes, who shall take a decision to set aside any
preceding decision for enlarging an Opposition Division in accordance with
Article 19(2) EPC?
iii) What
kind of evidence is required to show that such a decision was taken properly?
iv) Is
there any discretion of the Boards of Appeal, if doubts can be raised against
the lawful composition of an Opposition Division, to remit the case to the
Opposition Division or must the case be remitted in such cases?
3) in case
the requests in items 1) or 2) are not granted, to set aside the aforementioned
decision and to maintain the Patent as granted ("Main request");
4) if
neither of the foregoing requests is granted, to set aside the aforementioned
decision and
- to
maintain the Patent on the basis of claims 1 to 12 as filed as an auxiliary
request with the statement of grounds of appeal dated August 5, 2011 ("Auxiliary
Request I"), or
- to
maintain the Patent on the basis of claims 1 to 12 as enclosed to this letter
("Auxiliary Request II"), or
- to
maintain the Patent on the basis of claims 1 to 12 as submitted during the oral
proceedings("Auxiliary Request III") (in this order).
5) to
reject the request for apportionment of costs.
The
respondent (opponent) requested
- to
dismiss the appeal of the patentee,
- to order
that the patentee bear the costs of the second-instance appeal proceedings,
- as a
precaution, to remit the case to the department of first instance for hearing
the witnesses.
IV.
Independent claim 1 according to the patentee's main request reads as follows
(labelling of features (a) to (f) added by the board and identical with the
labelling in the decision under appeal):
"A
combination weighing apparatus for combining and discharging articles, said
combination weighing apparatus comprising:
(a) a
plurality of hoppers (4, 104; 5, 105) that hold the articles;
(b) memory
means (23) that stores said plurality of hoppers (4, 104; 5, 105) dividing them
into a first group (104, 105) and a second group (4, 5);
(c)
specification means (31) for specifying a discharge from at least one hopper
(105) in said first group based upon a predetermined criterion;
(d) weighing
means (10, 110) for weighing articles held in said hoppers (5, 105), said
weighing means (10) being provided at least in said hoppers (5) in said second
group;
(e)
selection means (32) for conducting a combination calculation using the weights
of said hoppers of only said second group (4, 5) obtained by said weighing
means (10), and selecting hoppers (5) based on the combination calculation such
that a total weight of said selected hoppers is within a predetermined weight
range; and
(f)
discharge means (33, 6) for collecting and discharging the articles held in
said hoppers (5) selected by said selection means (32) and the articles held in
said at least one hopper (105) specified by said specification means
(31)."
In the
following, Auxiliary Request I, II and III are also referred to as first,
second and third auxiliary request, respectively.
Claim 1 of
patentee's first auxiliary request is identical to that of the main request
except for feature (c) of the claim which reads:
(c)
specification means (31) for specifying a discharge from at least one hopper
(105) in said first group based upon a predetermined criterion stored in said
memory (23) and based on one of a random number signal, periodic conditions and
ratio conditions.
Claim 1 of
patentee's second auxiliary request is identical to that of the main request
except for feature (c) of the claim which reads:
(c)
specification means (31) for specifying a discharge from at least one hopper
(105) in said first group based upon a predetermined criterion stored in said
memory (23) and based on periodic conditions.
Claim 1 of
patentee's third auxiliary request is identical to that of the second auxiliary
request except for a feature added at the end of the claim which reads:
wherein the
periodic conditions assign the number of times that the at least one hopper
(105) in said first group is discharged while the hoppers (5) in said second
group are discharged a fixed number of times.
V. The
following patent documents will be referred to in the present decision:
D1: US
4,678,046
D7: US
4,466,500 .
VI. In the
decision under appeal it was considered that all the features of granted claim
1 were disclosed by document D1. [...]
VII. The
board issued a communication accompanying the summons to oral proceedings. The
preliminary opinion of the board indicated that it tended to share the
opposition division's opinion. In relation to the first auxiliary request, the
board raised doubts as to its admissibility under Article 12(4) of the Rules of
Procedure of the Boards of Appeal ("RPBA", OJ EPO 2007, 536). The
board noted that the appellant had made no attempt to avoid revocation of the
patent in the first-instance proceedings. It should have filed the amended set
of claims during those proceedings.
Apart from
that, the claimed subject-matter appeared to still lack novelty in respect of
D1. In addition, if the first auxiliary request were admitted, then the
relevance of the prior uses relied on before the opposition division would have
to be assessed by the board for the first time and additional evidence filed by
the opponent before the board, i.e. D7 and a fourth prior use V4 might have to
be admitted, too.
VIII. With
a letter of reply of 14 August 2015, the opponent requested that the appeal be
dismissed because the main request was unfounded and the first auxiliary
request was not admissible. In addition, it requested that the board order the
patentee to bear the costs of the appeal proceedings. It argued that filing the
first auxiliary request only at the appeal stage amounted to an abuse of
procedure. As a precaution, the opponent requested oral proceedings and, as a
further precaution, that the case be remitted to the opposition division to
hear witness testimony.
IX. For its
part, with a letter of reply of 12 August 2015, the patentee asserted that the
decision under appeal was tainted by a substantial breach of procedural
provisions of the EPC.
If the
board did not concur with this view, then it was requested to refer certain
related questions to the Enlarged Board of Appeal to ensure uniform application
of the law under Art. 112(1)(a) EPC. These questions are set out above, under
point III. 2), questions i) to iii).
If the
board did not allow any of these requests, then the patentee maintained that
the patent as granted met the requirements of novelty and inventive step. As a
precaution, it was requested to admit the first auxiliary request on file into
the proceedings and maintain the patent on that basis. The patentee also
submitted claims of a second auxiliary request being a narrower version of the
claim set according to the first auxiliary request. This request was filed in
response to and taking into account the comments made in the board's
communication. It should thus be admissible.
In the
course of the oral proceedings before the board, the patentee added question
iv) to the questions requested to be referred to the Enlarged Board of Appeal
(see above, at point III.2). Late in the afternoon of the date on which oral
proceedings were held, the patentee also filed claims of a third auxiliary
request.
Reasons for
the Decision
1. Primary
request: remittal under Article 11 RPBA
1.1 The
request
In its
reply of 12 August 2015 to the board's communication attached to the summons
for oral proceedings (hereinafter referred to as "the reply"), the
patentee for the first time in the present appeal proceedings asserted that the
decision under appeal was tainted by a substantial breach of procedural
provisions of the EPC. More specifically, the patentee was of the opinion that
the lawful composition of the opposition division as required by Article 19(2)
EPC was not ensured during the opposition proceedings which led to the decision
under appeal. As a consequence, pursuant to Article 11 RPBA and following the
findings in the decision in case T 990/06, in particular at points 2.4 and 3.2
of the Reasons, the case had to be remitted to the opposition division.
Article 11
RPBA reads as follows:
A Board
shall remit a case to the department of first instance if fundamental
deficiencies are apparent in the first instance proceedings, unless special
reasons present themselves for doing otherwise.
1.2 The
parties' submissions
- The
patentee
The
patentee bases its request for remittal pursuant to Article 11 RPBA on the
following facts (see point 2 of the reply):
A summons
to attend oral proceedings before the opposition division to be held on 5 April
2011 was issued on 23 September 2010. The summons showed the names of a
"1**(st) Examiner", "2**(nd) Examiner",
"Chairman" and "Legally qualified member". The
communication accompanying the summons stated at the beginning that "[t]he
opposition division ... has been enlarged by a legally qualified examiner
(Article 19(2) EPC)". The communication set forth that witnesses (whose
testimony was) offered by the opponent would be heard in accordance with the
enclosed order to take evidence. It appeared that the order was also signed by
the aforementioned individuals. After the patentee, with a letter of 3 March
2011, had given notice that it would not attend the oral proceedings, the
parties were informed with a fax of 24 March 2011 that the summons to attend
oral proceedings was cancelled and the procedure would be continued in writing.
The file contained a corresponding document referring to said faxed decision
which showed the signatures of three examiners only. The signature of the
legally qualified member was missing, and the signatures suggested that the
chairman had been replaced.
With the
decision of 31 March 2011 the parties were informed that the opposition
division had decided to revoke the patent. The decision showed only the names
of a chairman and a first and second examiner. The corresponding decision
document (EPO Form 2339 (Sheet 1)) on file of 25 March 2011 appeared to have
been signed by the same individuals as those who issued the decision to cancel
the oral proceedings.
The
decision under appeal indicated on page 1, at point 8 of the part "Facts
and Submissions" that "[t]he enlargement of the division by a legally
qualified examiner has been set aside on 22.03.2011 since no witness need to be
heard anymore".
The file
did not contain any document representing a decision to enlarge the opposition
division with a legally qualified examiner. Moreover, the file neither
contained any document representing a decision to reverse the enlargement. Nor
did the file contain any document explaining the change of the chairman.
Therefore,
the file did not allow verifying the lawful composition of the opposition
division at any substantial point in time. Firstly, at the time of the summons,
neither one of the summons, the communication accompanying the summons or the
order to take evidence revealed any details on the composition of the opposition
division going beyond the mentioning that the division had been enlarged. In
particular, from these documents, and any other documents available at that
time, it was not clear or verifiable when any decision to enlarge the
opposition division had been taken and, if so, who had taken that decision.
Secondly,
at some time after the summons had been issued, the opposition division
apparently changed its composition in two regards, namely by replacing the
chairman and by removing the legally qualified examiner. Again, there was no
document on file which showed when this had happened and who had taken the
corresponding decision. In particular, it remained a mystery who decided on
setting aside the decision to enlarge the opposition division if such reversal
decision was admissible at all.
Lastly and
most strikingly, if one were not to require a formal decision on the
enlargement or the setting aside of the enlargement in the meaning of T 990/06,
it remained impossible to verify whether the legally qualified examiner's
removal had been lawful. At point 8 of the "Facts and Submissions" of
the decision under appeal it was stated that the enlargement of the opposition
division had been set aside on 22 March 2011 "since no witness need[ed] to
be heard anymore". However, the decision under appeal had been signed by
three examiners only. The patentee concludes therefrom: "Thus, the
decision was apparently also taken by said three examiners only".
Therefore, there was no evidence on file that on 22 March 2011 a panel
comprising the four examiners forming the opposition division at that time had
decided to set aside the enlargement. To the contrary, all documents in the
file, which the EPO issued after the patentee had informed the opposition
division on 3 March 2011 that it would not attend the oral proceedings showed
at best the names of three technically qualified examiners. This made it
doubtful whether the legally qualified examiner had been involved in the
proceedings at all after the patentee's letter of 3 March 2011.
In the oral
proceedings before the board the patentee added that the opposition division
must have taken a decision on the merits on 22 March 2011, i.e. the date
mentioned in the decision under appeal (at point 8 of the "Facts and
Submissions") when the enlargement of the division was set aside
"since no witness need[ed] to be heard anymore" (see idem). This
means that the opposition division must have agreed that D1 sufficed as a basis
for revocation of the patent, even though, in the summons to the hearing before
the division, the division also invited witnesses, i.e. they were not sure
whether D1 would suffice. That meant that there was a discrepancy between the
opinion of the four-person panel that took the decision to hear witnesses and
the opinion of the three-person panel that cancelled the oral proceedings on 24
March 2011 and thereafter gave the decision of the opposition division, first
on 25 March 2011, and then, with reasons mentioning the reduction of the
opposition division, on 31 March 2011. This would add weight to the assumption
that the decision of 22 March 2011 to reduce the opposition division was also
taken only by three and not - as required - by four examiners including the
legally qualified one. It was only on 25 March 2011 that it became clear that
no witnesses should be heard, but the legally qualified examiner had been
removed from the opposition division before that date. It was not clear for the
patentee and the public who took the decision of 22 March 2011, whether the division
was composed of the correct members or whether there was bias for some reason
leading to the decision having been taken by three members only.
- The
opponent
The
opponent objected to a remittal. It argued, in particular, that it was lawful
to reduce an enlarged opposition division once the purpose for enlargement had
ceased to exist. This was due the efficiency rule ("economic
principle"). If it had been forgotten to add a document to the European
Patent Register, then this was a non-substantial procedural deficiency. But
even if it were substantial, then there would be special reasons (within the
meaning of Article 11 RPBA) not to remit the case to the department of first
instance, i.e. the fact that remittal would lead to a substantial delay of the proceedings
even though their outcome was clear. The rights of licensees who would be
affected by a remittal should also be taken into account. In this context, the
opponent relied on the decision in case T 515/05 where the board decided not to
remit the case, because the arguments of the patentee had been taken into
consideration by the opposition division, the patentee had expanded its line of
reasoning before the board, and the patentee had given no specific reason why
the case should be remitted, such as an intention to produce further evidence.
The
replacement of a chairman did not have to be made by a decision in the
respective case, and the reasons therefor did not need to be mentioned in the
online register. The replacement, rather, was made in the framework of the
"business distribution scheme".
The
patentee, in not attending the oral proceedings before the opposition division,
showed its lack of interest in the details of the composition of the division.
The announcement that it would not attend the oral proceedings triggered their
cancellation. Furthermore, the patentee, in its statement of grounds of appeal,
raised no objections to the composition of the division. As a consequence, it
was barred from objecting to the various compositions of the opposition
division (the opponent, in this context, referred to the term "rügeloses
Einlassen"). The patentee had raised the objection only after having
received the unfavourable opinion of the board.
1.3 Whether
the patentee's objection relating to the composition of the opposition division
can be dealt with in the present appeal proceedings
The
patentee maintains that this is a question to be examined ex officio and
therefore can be brought up at any time during the proceedings.
The board,
in principle, agrees with the patentee on this point. In European patent
procedure there is no such legal concept as "rügeloses Einlassen", a
term known in German civil procedure and referring, in principle, to the loss
of the right to a certain objection by participating in the debate, especially
in a hearing, without raising that objection. The opponent has not provided
facts and evidence according to which such a concept could be relied on under
Article 125 EPC 1973. What is acknowledged in European patent procedure is the concept
of abandonment. However, the mere fact that the patentee did not raise the
objection relating to the composition of the opposition division before its
submission of 12 August 2015, i.e. roughly one month before the oral
proceedings before the board, cannot be considered to amount to the abandonment
thereof.
Nevertheless,
the board holds that Article 13(1) RPBA does apply to submissions made after
the filing of the statement of grounds relating to matters that need to be
examined ex officio given that such submissions are covered by the term
"amendment to a party's case".
In the
present case, the board admits the objection relating to the composition of the
opposition division pursuant to Article 13(1) RPBA. The point having been
raised about one month before oral proceedings the board considers that there
was enough time both for the opponent and the board to deal with it, and the
opponent in fact did make substantial submissions on the topic.
1.4 Whether
an enlarged opposition division can in principle be reduced again
As can be
seen from the summons for oral proceedings of 23 September 2010 and the
enclosed order to take evidence, the opposition division originally composed of
three technical examiners (chairman, primary and second examiner) was, as a
matter of fact, enlarged by a legally qualified member. It is also clear that
the decision to cancel the oral proceedings of 24 March 2011 and the decision
to revoke the patent (i.e. both the decision document of 25 March 2010 and the
reasoned decision of 31 March 2010) were adopted by only three examiners, i.e.
without the legally qualified member. It follows that the enlargement, as a
matter of fact, must have been undone in between.
The
patentee argued that there was no legal basis for reducing the four-examiner
panel to three. Only the opposite case, i.e. the enlargement, was dealt with in
the EPC, i.e. in its Article 19(2), fourth sentence.
The
opponent said reduction was possible due to the efficiency rule ("economic
principle").
The board,
in the hearing, drew the patentee's attention to T 990/06 on which the patentee
heavily relied in general, and in which the possibility of a reduction was
taken for granted (see points 2.1 in fine and 2.4, first paragraph). The
patentee answered that it did not rely on this particular point of the
decision. The board also informed the parties about two decisions handed down
by the General Court of the European Union (formerly referred to as Court of
First Instance) in cases T-251/00 of 20 November 2002 and T-488/09 of 12 May
2011. In T-251/00, affirmed by T-488/09 (see point 106), it was held that in
accordance with a general principle of law that, in principle, a body which has
power to adopt a particular legal measure also has power to abrogate or amend
it by adopting an actus contrarius, unless such power is expressly conferred
upon another body. (See point 130.)
In T-392/04
of 14 December 2006 the Court concluded from this principle that a decision
could only be validly corrected by all members of a board of appeal (of OHIM)
and not by the rapporteur alone (see point 53).
The
patentee would prefer the Enlarged Board of Appeal to give an opinion on
whether the principle also applied in European patent law.
The board
considers that the answer is plain and that therefore no opinion of the
Enlarged Board is required (see, in greater detail, below, at point 2.4). The
board holds that the principle enunciated by the General Court in case
T-251/00, also applies in European patent law, i.e. an opposition division
enlarged to four members pursuant to Article 19(2) EPC 1973 can be reduced
again to three members and it is for the four-person panel to decide on the
reduction. In this respect the board concurs with T 990/06 (see points 2.1 in
fine and 2.4, first paragraph). In deciding on the reduction, the opposition
division consisting of four members must properly exercise its discretion. The
reasons for these findings are as follows:
First, to
the General Court, the principle quite obviously is basic so that it did not
need to further explain it. The board concurs and considers that it is also a principle of procedural law generally recognised in the Contracting States to
the EPC pursuant to Article 125 EPC 1973.
Second, the
principle is required by the need for procedural efficiency following from
various provisions of the EPC, notably Article 114(2). Procedural efficiency
requires that, once the reason for enlargement, e.g., as in the case at hand,
the hearing of witnesses, is considered to have ceased to exist, then no need is
apparent for maintaining the enlargement based on this reason. The opponent was
right to make this point. It should be added that where a four-person division
delivered the decision, then a five-member appeal board needs to hear the case,
instead of a board composed of three members; see Article 21(3)(b). This
provision lends added weight to the efficiency criterion.
Third, the
opposition division, in deciding on whether to reduce, has discretion and must
use it properly.
It may be
true that there may be situations in which the (sole) original reason for
enlargement may have ceased to exist, but where, in the deliberations of the
four members of the division made in the course of the proceedings, other
reasons for enlargement may have arisen. In such a situation the division would
need to maintain its enlarged composition.
Furthermore,
as the patentee pointed out, there may be situations in which the division may
not have been unanimous in its assessment of the issues surrounding the case.
The legal examiner may have sided with the chairman, and thus a specific
approach may have been followed which was in contrast to the view of the other
two technical examiners. Where such is the case, one might consider that the
four-person composition should also be upheld in order to avoid a situation in
which the stance would arbitrarily be upended. However, the danger that such a
decision to reduce would be taken in the four-person composition is unlikely,
as the chairman and the legal member have the majority. This follows from the
last sentence of Article 19(2) EPC 1973 according to which "[i]n the event
of parity of votes, the vote of the Chairman of the [Opposition] Division shall
be decisive".
1.5 Whether
the discretion to reduce the enlarged opposition division was properly
exercised in the present case
In the
present case, different from what the patentee asserts, there is no indication
of an improper exercise of discretion. The patentee's two theories developed in
this respect are not persuasive:
- Re change
of opinion of the opposition division
There is no
indication on file of any change of position of the opposition division since
issuance of the communication annexed to the summons for oral proceedings of 23
September 2010. In that communication, document D1 was already found to be
novelty-destroying, that finding having been affirmed later in the decision
under appeal. See point 1.2 of the communication where it was said that
"[t]his feature [disclosed in D1] suffices to take away the novelty of
claim 1...". It was again a measure of procedural efficiency to summon the
witnesses in case that that view could not be maintained on the basis of any
submissions made by the patentee in those proceedings or in any written
submissions filed in preparation thereof.
The
patentee, with the letter of 3 March 2011, had made additional submissions
countering the division's position regarding the novelty-destroying character
of D1. It had however also informed the division that it would not attend the
oral proceedings. Thus it could not bring about a change of the position of the
division in relation to novelty during the oral proceedings, their position
having obviously been left unaffected by the submissions made in the
aforementioned letter. Consequently, there was no need to hear the witnesses,
and the oral proceedings could be cancelled.
In other
words: the very patentee's conduct did away with the need to hear the
witnesses. The corresponding decision by the division to cancel oral
proceedings was therefore consistent with the division's previously expressed
opinions. As no change of position of the division has become apparent, the
patentee's surmise about such a change because of possibly divergent views
within the enlarged division that might have led to the exclusion of the legal
member has no basis in the facts, but, rather, turns things upside down.
- Re role
of the chairman
The same
conclusion applies to the patentee's theory regarding the decisive vote of the
chairman in an enlarged opposition division. In the patentee's view, it might
have happened that the decision to reduce was not taken by all four members,
but only by three of them, and the two members outvoted the chairman. This
might have had an influence on the outcome of the case, because, in a
four-member opposition division, in case of parity, the chairman's vote tipped
the balance.
The board
considers such a scenario to be highly implausible. If the chairman had taken a
view different from that of the two technical examiners, but in line with that
of the legally qualified member, then the chairman and the legally qualified member
would in all likelihood not have agreed to reduce the division.
1.6 Whether
the right body took the decision to reduce the opposition division from four to
three examiners
As found
above, at point 1.4, an enlarged opposition division consisting of four members
can be reduced again, and it must be the four-person panel that decides on the
reduction.
The board
is satisfied that this principle was complied with in the present case, more
specifically that the opposition division was reduced on 22 March 2011, as
stated at point 8 of the part "Facts and Submissions" of the decision
under appeal. Point 8 literally reads as follows:
The
enlargement of the division by a legally qualified examiner has been set aside
on 22.03.2011 since no witness need to be heard anymore.
Point 8
does not indicate who took the decision, but absent any indication to the
contrary, it must be assumed that the decision was adopted in a lawful manner,
i.e. that the whole of the panel comprising four persons took it.
The members
of the division are officials entitled to grant or refuse European patent
applications, or to maintain or revoke European patents. It must therefore be
considered to be within their capacity to also confirm specifics of the patent
proceedings, such as the reduction of an opposition division from four to three
members.
As long as
there are no hints to the contrary, as in the present case, the division must
be presumed to have acted lawfully. The patentee confirmed in the hearing that
there were no such hints, but that it wanted to verify the decision to reduce
in question. Whether the patentee has such a right will be discussed in the
following section below.
1.7 Whether
the decisions pertaining to the composition of an opposition division need to
be added to the public file at any essential point of the proceedings
To support
its request for remittal due to a fundamental deficiency of the proceedings
before the opposition division pursuant to Article 11 RPBA, the patentee
heavily relied on the decision in case T 990/06 (with the exception of the fact
that the board took the legal possibility of a reduction of an enlarged
division for granted; see point 2.1 in fine.)
At point
2.1 of this decision, the board indeed held that Article
19(2) EPC [1973] contains clear instructions on how an opposition division, as
a rule, has to be composed. Thus the parties know which decision-making body
conducts, and takes the decision in a set of oral proceedings on the case. This
makes it possible for the parties to scrutinise compliance with the provisions
of Article 19(2) EPC [1973] as well as the impartiality of the members of this
decision-making body pursuant to G 5/91 (OJ EPO 1992, 617). For this reason it
is indispensable that the composition of the opposition division is clear and
verifiable at any essential point in time in the course of the opposition
proceedings. For this reason it is furthermore indispensable that the procedure
to enlarge the opposition division by a legally qualified member pursuant to
Article 19(2) EPC [1973] has to be subject to scrutiny. The same applies as a
matter of course to the possible retirement of a member from the division if
the reason for his or her participation has ceased to exist. (Translation made
by the board; emphasis added.)
The board
in T 990/06 also held (at point 2.4) that where an opposition division was
enlarged by a legally qualified member, the file would have to include a
respective decision signed by the three members of the opposition division. If
the enlargement had subsequently been set aside, then the file would need to
also include the respective decision, signed by all four members. Furthermore,
if there were doubts as to the lawful composition of the opposition division,
then doubts would also arise as to the legality of the decision that it adopted
(see point 2.5 of T 990/06).
In this
respect, the present board would first like to point out that, in the cited
decision in case G 5/91, the Enlarged Board held (at point 5) that no separate
appeal lay in principle from a decision regarding the composition of the
opposition division:
There is no
legal basis under the EPC for any separate appeal against an order of a
director of a department of the first instance such as an Opposition Division
rejecting an objection to a member of the division on the ground of suspected
partiality. However, the composition of the Opposition Division may be
challenged on such a ground on appeal against the final decision of the
division or against any interlocutory decision under Article 106(3) EPC [1973]
allowing separate appeal. If not all the members of an Opposition Division
should have fulfilled the requirement of impartiality, there has occurred a
procedural violation as to the composition of the Opposition Division, normally
rendering the decision void. It lies clearly within the competence of the
Boards of Appeal to consider and decide on whether the requirements concerning
the composition of an Opposition Division have been fulfilled.
If no
separate appeal lies in principle from a decision regarding the composition of
the opposition division, then questions arise in relation to the view expressed
in T 990/06 that "it is indispensable that the composition of the
opposition division is clear and verifiable at any essential point in time in
the course of the opposition proceedings" (emphasis added). If necessary,
the correctness of the composition has to be assessed once the proceedings
before the opposition division have come to an end by virtue of the adoption of
a final decision, i.e. by a board of appeal in the context of the examination
of that decision under appeal.
To show a
more general contrast to T 990/06, the board, during the oral proceedings,
handed over a copy of the decision in case T 160/09 to the parties. In point
12.5 of that decision it is said:
The board
therefore concludes that the patentee has failed to establish a transparency
principle which would, according to Article 125 EPC 1973, require the EPO to
publish the appointment procedure of examiners. The board also finds that the
patentee has not established that the replacement of the second examiner in the
present case infringed on its right to be heard or constituted a fundamental
procedural defect for other reasons. (Emphasis added.)
For the
sake of completeness, the board adds that the facts underlying the decision in
case T 990/06 differ significantly from those in the case at hand. In that case
there was, in particular, a discrepancy between internal documents and those
sent to the parties.
Against the
backdrop of the above case-law, the board, in the present case, considers it
appropriate to leave the question of whether the decisions pertaining to the
composition of an opposition division need to be added to the public file at
any essential point of the proceedings undecided. This is because, in the
present case, the board has no doubt that both the decision to enlarge the
opposition division and to reduce it again at a later stage were each indeed
lawfully adopted at proper points in time. This finding will prove to be sufficient
for the board's decision on whether or not to remit the case under Article 11
RPBA. See below, at point 1.9.
As to the
enlargement of the division preceding the summons to oral proceedings before
the opposition division, there was not much debate during the oral proceedings
before the board, with the patentee focusing on the reduction of the division.
The board, in respect of the enlargement, relies on the correctness of the
statement made at the beginning of the communication (dated 21 September 2010)
accompanying the summons of 23 September 2010 that "[t]he opposition
division ... has been enlarged by a legally qualified examiner (Article 19(2)
EPC)" (as quoted by the patentee; see above, at point 2.1, second
paragraph). This statement was later affirmed in point 5 of the part
"Facts and Submissions" of the decision under appeal reading in
pertinent part:
Oral proceedings
are appointed and scheduled for April 5 and 6, 2011. The opposition division is
enlarged by a legally qualified examiner as witnesses need to be heard in order
to prove the alleged prior uses (V1, V3).
In line
with the statement in the communication just quoted, as correctly mentioned by
the patentee (see above, at point 1.2), both the summons for oral proceedings
before the opposition division of 23 September 2010 and the accompanying order
to take evidence were signed by four members of the opposition division.
As to the
core of the debate, i.e. the reduction of the enlarged opposition division, the
board is convinced of the veracity of point 8 of the part "Facts and
Submissions" of the decision under appeal affirming that the decision to
reduce the division was indeed lawfully taken. See already above, at point 1.6.
1.8 The
replacement of the chairman
The
patentee also criticised the fact that the file contained no document
explaining the change of the chairman. But the patentee did not cast doubt in
principle on the possibility to replace a chairman. The board considers that
this is possible and refers in this respect to the decision in case T 160/09
(at point 11) dealing with the replacement of members of an examining or
opposition division, including the chairman:
The
appointment and possible replacement of members of the examining (and
opposition) divisions are amongst the "necessary steps" which by
Article 10(2)(a) EPC 1973 the president is empowered to take to ensure the
functioning of the European patent office. The president may delegate these
powers under Article 10(2)(i) EPC 1973. In this respect, Rule 12(1) EPC 1973
provides that examining divisions are grouped together administratively so as
to form directorates. In the board's view this implies that the president
delegates decisions about administrative matters regarding the examining
divisions, including the appointment and replacement of members, to the
directorates.
In the
present board's opinion, the latter implication, by analogy, applies to
opposition divisions.
As to the
question of who acted as chairman at the essential points in time, the board
notes the following: it ensues from the file that the new chairman acted on 24
March 2011 when the oral proceedings were cancelled, the signature (without the
name in block letters) corresponding with the signature on the decision
document of 25 March 2011 to which the name was added in block letters. The
same new chairman was also mentioned in the reasoned decision of 31 March 2011.
The new chairman was appointed on 23 February 2011. The rapporteur informed the
parties during the oral proceedings that this information was found in the
internal EPO register. The board deduces therefrom that the new chairman also
took part in the decision to reduce the enlarged opposition division on 22
March 2011, i.e. two days before the oral proceedings were cancelled.
In the
light of the foregoing the board has no doubt as to the correctness of the
replacement of the chairman. After the information on the date of replacement
had been provided by the board during the oral proceedings, the patentee did
not make additional submissions on this point.
1.9 The
consequence: whether to remit or whether special reasons present themselves for
not remitting the case to the opposition division
Pursuant to
Article 11 RPBA, already quoted above, a "board shall remit a case to the
department of first instance if fundamental deficiencies are apparent in the
first instance proceedings, unless special reasons present themselves for doing
otherwise".
In case T
990/06, the board, having found it to be impossible to determine the
composition of the opposition division at any essential point in time, remitted
the case. In doing so, it considered, but rejected the other party's objection
that remittal would substantially delay the proceedings. The fundamental
deficiency prevented it from continuing the proceedings. (See point 3.2. of T
990/06)
Conversely,
pursuant to T 515/05, cited by the opponent, even though a fundamental deficiency
had become apparent, the board still exercised its discretion in not remitting
the case. The board (at point 4.4) held that denying the opponent (appellant)
the opportunity during the oral proceedings to comment on a ground of
opposition (Article 100(b) EPC), albeit brought into the case by the Opposition
Division itself, constituted a substantial procedural violation (Article 113(1)
EPC). The reasons for still not remitting the case were as follows:
5.2
Although according to Article 10 of the RPBoA [now Article 11] a Board should
usually remit a case to the Division at first instance if a fundamental
deficiency arises, remittal is not an automatic consequence and if special
circumstances exist the Board may decide otherwise.
In the
present case, the Board considers that remittal is not appropriate, essentially
because (i) the arguments of the Appellant concerning Article 100(b) EPC...
were taken into account in the decision under appeal ... by the Opposition
Division on [sic] its own motion (these arguments de facto being those produced
by the Opposition Division itself when introducing this new ground ...), (ii)
the Appellant in the meantime has had the opportunity, and indeed availed
itself of it, to expand its argumentation in this respect before the Board, and
(iii) no concrete reason was given by the Appellant for the necessity for
remittal (e.g. no intention was declared for the production of further evidence
which would need more time for preparation). In the circumstances a remittal to
the Opposition Division would only unnecessarily delay the proceedings.
The board
leaves the question open whether T 515/05, whose conditions might be met in the
present case, should be followed.
The board
assumes arguendo, and favourably for the patentee, that the fact that no
decision to enlarge nor a decision to reduce the opposition division was added
to the publicly available file and the fact that the appointment of the new
chairman could only be traced from the internal register of the EPO both
constitute fundamental deficiencies of the proceedings before the opposition
division.
However,
different from the situation in T 990/06, it is possible to determine from the
file that the division was lawfully enlarged and, at a later stage, lawfully
reduced again. This follows especially from points 5 and 8 of the part
"Facts and Submissions" of the decision under appeal, as explained
above, at points 1.6 and 1.7.
The board
considers that, independent of the considerations in T 515/05 just mentioned,
these circumstances constitute special reasons for not remitting the case
within the meaning of Article 11 RPBA. The aforementioned fundamental
deficiencies assumed arguendo in favour of the patentee are of a formal nature.
They would, in the board's view, not justify substantially delaying the already
lengthy proceedings (the filing date of the patent application is 10 January
2002, and the date of publication and mention of the grant of the patent is 30
May 2007).
2.
Alternate request
2.1 If the
board did not concur with the patentee's view regarding remittal under Article
11 RPBA, then it was requested to refer certain related questions to the
Enlarged Board of Appeal to ensure uniform application of the law and also to
deal with a point of law of fundamental importance pursuant to Article
112(1)(a) EPC. For the sake of convenience, these questions are repeated below:
(i) May the
composition of an Opposition Division be reduced again during pending
opposition proceedings once it had been enlarged by a legally qualified examiner
in accordance with Article 19(2) EPC?
(ii) If the
answer to question (i) is yes, who shall take a decision to set aside any
preceding decision for enlarging an Opposition Division in accordance with
Article 19(2) EPC?
(iii) What
kind of evidence is required to show that such a decision was taken properly?
(iv) Is
there any discretion of the Boards of Appeal, if doubts can be raised against
the lawful composition of an Opposition Division, to remit the case to the
Opposition Division or must the case be remitted in such cases?
2.2
According to Article 112(1) (a) EPC 1973, a board of appeal shall refer any
question to the Enlarged Board of Appeal if it considers that a decision is
required to ensure uniform application of the law or if a point of law of fundamental
importance arises.
2.3 In the
present case the board does not consider that, for the purposes of deciding on
the present case, a decision is required on any of the above questions either
to ensure uniform application of the law or because a point of law of
fundamental importance has arisen.
2.4 A
question involving an important point of law need not be referred to the
Enlarged Board of Appeal if the board of appeal hearing the case considers
itself able to answer it beyond any doubt; see J 5/81 (OJ EPO 1982, 155),
headnote 2).
As the
board considers this to be the case in relation to questions i) to iii), an
answer by the Enlarged Board of Appeal to these questions is not required.
Question
(i) was answered in the affirmative (see above, at point 1.4), question (ii)
was answered in the sense that the opposition division consisting of four
members must adopt the decision (see idem). The patentee has not submitted that
there was divergent case-law on questions i) to iii). On the contrary, the
board in the decision in case T 990/06 on which the patentee heavily relied
arrived at the same conclusion regarding questions i) and ii) as the board
deciding on the present case.
As to
question (iii), no general answer as to the evidence required is necessary,
because it is clear to the board that in the present case the statement in
point 8 of the part "Facts and Submissions" of the decision under
appeal is credible. The board is satisfied that the decision to reduce the
opposition division was taken properly as to substance. The question of
whether, for purposes of transparency, decisions on enlargement and reduction
of an opposition division would have to be added to the public file at any essential
point in time is being left open. In the light of the foregoing, no referral is
required on the question of evidence necessary in general to show that a
decision to reduce an opposition division was taken properly .
The board
adds obiter that it sees no legal obstacles for the EPO to systematically add
decisions on enlargement of opposition divisions by legally qualified members
to the public file. The same would apply if subsequently an opposition division
were reduced to a composition of three members.
2.5
Question (iv) is not relevant, and consequently a decision by the Enlarged
Board is not required, because no doubts could successfully be raised in the
case at hand; see the answer to point (iii). As a consequence, the more general
question of whether a specific category of situations could at all arise in
which the discretion afforded by Article 11 RPBA would exceptionally be limited
to one sole correct decision, i.e. the decision to remit, and if so, whether
the category mentioned by the patentee, i.e. the presence of doubts as to the
lawful composition of an opposition division, would qualify, is moot.
3. Main (claim) request – Novelty […]
3.2.4 In
conclusion, the patentee's arguments in favour of novelty of the claimed
subject-matter are not found to be convincing by the board.
4. First
and second auxiliary (claim) requests […]
It follows
that D1 discloses the subject-matter of both the first and the second auxiliary
request.
5. Third
auxiliary (claim) request – Admissibility […]
5.1.8 For
the above reasons, the board decided not to admit the third auxiliary request
into the proceedings.
6. The
opponent's request that the patentee bear the costs of the appeal proceedings
6.1 The facts
In its
reply to the board's communication attached to the summons for oral
proceedings, the opponent requested that the patentee bear the costs of the
appeal proceedings. The patentee had filed Auxiliary Request 1 together with
the statement of grounds of appeal only. But it had filed no auxiliary request
at all in the proceedings before the opposition division even though the
communication attached to the summons for the oral proceedings before the
opposition division was unfavourable as to the main and sole request and would
thus have suggested filing an auxiliary request. Furthermore, the
patentee did not attend those oral proceedings.
The
opponent was of the opinion that the late filing of Auxiliary Request 1 did not
comply with the principle of fairness and amounted to an abuse of the procedure
in the present case, because in respect of Auxiliary Request I witnesses would
have to be summoned once more and the opponent would in addition lose one
instance for dealing with the pertinent issues. Had the patentee made its
defence in a procedurally efficient way before the department of first
instance, then the relevant questions could have been answered at that stage.
In the oral
proceedings the patentee objected to the request for apportionment of costs. It
argued that the opponent's submissions regarding the chances of success of the
main request before the opposition division were not true. Furthermore, the
principle of fairness was not infringed because claim 1 of Auxiliary Request 1
comprised a combination of features of certain granted claims. Finally, in
relation to a possible award of costs, the fact should be considered that the
opponent was accompanied by witnesses even though they were not summoned.
6.2 Analysis
Pursuant to
Article 104(1) EPC, "[e]ach party to the opposition proceedings shall bear
the costs it has incurred, unless the Opposition Division, for reasons of
equity, orders ... a different apportionment of costs." According to
Article 16(1) RPBA, the board may, subject to Article 104(1) EPC, "on
request order a party to pay some or all of another party's costs which shall,
without limiting the Board's discretion, include those incurred by any (a)
amendment pursuant to Article 13 [RPBA] to a party's case as filed pursuant to
Article 12, paragraph 1".
The wording
of Article 104(1) EPC makes it clear that, as a rule, each party bears its own
costs. In the present case, the board has found no reasons of equity suggesting
a departure from this rule. It might have been expedient to file the first
auxiliary request before the opposition division for the reasons mentioned by
the opponent. However, the board was in a position to deal with the substance
of this request, whose admittance it left open, during the oral proceedings. No
witnesses needed to be heard. This also applies to the second auxiliary
request. The third auxiliary request was not admitted. Finally, the oral
proceedings could be brought to an end by a decision on the date appointed for
those proceedings. The patentee could in any case not have been criticised for
defending its main request in oral proceedings before the board. It is
furthermore not uncommon that a patentee files an auxiliary request even during
oral proceedings, as in the case at hand, in reaction to the development of
those proceedings, and this request may or may not be admitted under the
provisions of Articles 13(1) and (3) RPBA. Even in case of non-admittance, as
in relation to the third auxiliary request in the case at hand, a discussion on
admittance must take place.
All things
considered, there was no causal connection between the patentee's conduct, in
particular before the opposition division, and the need for the oral
proceedings the way they were held. The patentee's conduct therefore cannot be
considered to infringe the principle of fairness or even amount to an abuse of
procedure. As a consequence, the board does not consider it to be appropriate
to order a different apportionment of costs for reasons of equity.
Order
For these
reasons it is decided that:
1. The
request to remit the case to the department of first instance pursuant to
Article 11 RPBA is refused.
2. The
request for referral to the Enlarged Board of Appeal is refused.
3. The
appeal is also dismissed for the remainder.
4. The
request for apportionment of costs is refused.
This decision T1254/11 has European Case Law Identifier: ECLI:EP:BA:2015:T125411.20150917. The file wrapper can be found here. Photo "ThreeTichborneJudges" by Not known or recorded in publication - Frontispiece to Famous Trials by John T. Morse Jr. Boston: Little, Brown and Company, 1874.
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