Reimbursement of Appeal Fees due to a violation of right to be heard - Board of Appeal decision T 2610/19
Both European patent attorneys at WBH Wachenhausen Patentanwälte PartG mbB, MunichDisclaimer: The authors of this article have been involved in the discussed appeal decision as representatives for the appellant after the opposition was rejected in the first instance.
T 2610/19 confirms that it is within the discretion of the Opposition Division to limit the number of inventive step attacks to a reasonable amount. However, the Opposition Division at least needs to allow a discussion of which documents are suitable starting points in oral proceedings to meet the right to be heard. In particular, this is the case if the Opposition Division intends to address an inventive step attack based on a different starting point in its decision besides those discussed in the oral proceedings. Further, such a discussion is also necessary in case the Opposition Division has identified a more suitable starting point in its preliminary opinion.
Representatives are advised to prepare a discussion of which prior art documents should be considered as suitable starting points for an inventive step attack so that each inventive step attack based on such documents is fully discussed in the oral proceedings. Further, representatives should consider the order in which valid starting points for lack of inventive step should be discussed.
T 2610/19 bestätigt, dass es im Ermessen der Einspruchsabteilung liegt, die Zahl der Angriffe wegen fehlender erfinderischer Tätigkeit auf eine angemessene Anzahl zu beschränken. Die Einspruchsabteilung muss in der mündlichen Verhandlung jedoch mindestens eine Diskussion darüber zulassen, welche Dokumente als Ausgangspunkt geeignet sind, um nicht das rechtliche Gehör zu verletzen. Dies ist insbesondere dann der Fall, wenn die Einspruchsabteilung beabsichtigt, in ihrer Entscheidung auf einen Angriff wegen fehlender erfinderischer Tätigkeit einzugehen, welcher auf einem anderen Ausgangspunkt beruht als die in der mündlichen Verhandlung erörterten Angriffe. Eine solche Diskussion erscheint auch dann erforderlich, wenn die Einspruchsabteilung in ihrer vorläufigen Stellungnahme einen geeigneteren Ausgangspunkt ermittelt hat.
Vertretern wird empfohlen, eine Diskussion darüber vorzubereiten, welcher Stand der Technik als Ausgangspunkte für einen Angriff auf die erfinderische Tätigkeit als geeignet anzusehen ist, damit jeder Angriff auf die erfinderische Tätigkeit, der sich auf solche Dokumente stützt, in der mündlichen Verhandlung umfassend erörtert wird. Außerdem sollten die Vertreter erwägen, in welcher Reihenfolge stichhaltige Ausgangspunkte für fehlende erfinderische Tätigkeit diskutiert werden sollten.
La décision T 2610/19 confirme qu'il est à la discrétion de la division d'opposition de limiter le nombre d'attaques pour absence d'activité inventive à un nombre raisonnable. Toutefois, la division d'opposition doit au moins permettre une discussion lors de la procédure orale sur les documents qui sont appropriés comme point de départ pour satisfaire au droit d'être entendu. C'est notamment le cas si la division d'opposition a l'intention de traiter dans sa décision un recours à l'activité inventive basé sur un point de départ différent de ceux discutés dans la procédure orale. En outre, une telle discussion est également nécessaire dans le cas où la division d'opposition a identifié un point de départ plus approprié dans son avis préliminaire.
Il est conseillé aux mandataires de préparer une discussion sur les documents de l'état de la technique qui devraient être considérés comme des points de départ appropriés pour une attaque de l'activité inventive, de sorte que chaque attaque de l'activité inventive basée sur ces documents soit pleinement discutée dans la procédure orale. En outre, les mandataires devraient considérer l'ordre dans lequel les points de départ valables pour le manque d'activité inventive devraient être discutés.
I. Legal background
Rule 103 (1) a) EPC, second option, stipulates the possibility that the appeal fee shall be reimbursed in full where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of substantial procedural violation. For reimbursement of appeal fees, a first requirement is that the Board of Appeal at least partially grants the requests of the appellantsee J 37/89 and J 18/84 as well as the Case Law of the Boards of Appeal, V.A.9.4. A second requirement requires some form of fundamental flaw in process management by the Opposition Divisionsee the Case Law of the Boards of Appeal, V.A.9.5.
The first requirement is self-explanatory and, at least in case of overturning the decision, evident goal of any appeal. The second requirement is less straightforward, as substantial procedural violations are not explicitly specified in the EPC. Hence, substantial procedural violations are rather defined by case law. As a baseline, the violation must be of a procedural nature rather than relate to an error of judgment on substantive issuessee T 12/03, T 690/06 and T 860/93 as well as Case Law of the Boards of Appeal, V.A.9.5.1. Moreover, the violation must also adversely affect the rights of the parties to be considered serioussee T 682/91 as well as Case Law of the Boards of Appeal, V.A.9.5.2. Further, the procedural violation must be committed by the department whose decision is under appeal - usually the opposition division rather than the examining divisionsee T 469/92 or any other party involved in the proceedingssee also Case Law of the Boards of Appeal, V.A.9.5.3. Noteworthy, the Guidelines are not legally binding and failure to follow them is not a procedural violation in itselfsee T 42/84.
Probable partiality of a member of an opposition divisionsee T 900/02 and T 1647/15, generally erroneous communications by the EPOsee Case Law of the Boards of Appeal, V.A.9.5.17, failure to summon for oral proceedingssee Case Law of the Boards of Appeal, V.A.9.5.7, failing to provide reasons for a decisionJ 18/16 or a wrong composition of an opposition divisionsee T 2546/17 and Case Law of the Boards of Appeal, V.A.7.7.2 are some of the substantial procedural violations defined by the case law.
Further, the right to be heardsee Art. 113 (1) EPC is one of the principles of procedural law generally recognized in the Contracting statessee Art. 125 EPC, which needs to be observed in all proceedings before the EPOfor more details, refer to Case Law of the Boards of Appeal, III.B. A violation of the right to be heard is uncontestably considered as a substantial procedural violation.
However, the need for procedural efficiency and the right to be heard are conflicting objectives both legally and in practice when managing a case. The EPO regularly strives to improve procedural efficiency while avoiding adversely affecting the right to be heard. An approach to resolve this conflict is to front-load the proceedings by forcing each party to present their facts and arguments as early in the proceedings as possible and limit the oral discussion and late filing of documents. The latest iteration of this approach are the rules of Procedure of the Boards of Appeal of 2020 - stipulations of which are also discussed in the present decision of the Boards of Appeal. However, while an Opposition Division is free to focus the oral proceedings on certain arguments and attacks, the right to be heard is not already met in case a party requested oral proceedings according to Art. 116 EPC when only allowed to present the arguments in writingsee sections 10 and 14 of T 1077/06, also cited in the present decision.
The balancing of the right to be heard versus the need for procedural efficiency has been developed further in the present subject T 2610/19 dated July 14, 2022.
II. Relevant facts of the case
T 2610/19 relates to an appeal against the interlocutory decision in the first instance opposition proceedings. The interlocutory decision refuses the opposition and maintains patent EP 2158095 B1. Generally speaking, said patent was directed to a plate with several layers, a method of producing such a plate and a use of such a plate. Opponent argued during the proceedings in the first instance that the independent claims are not novel over two prior art documents (F2 and D4, noting that F2 was considered as novelty destroying for the independent claims in the decision by the Boards of Appeal) and not based on an inventive step over a combination of two pairs of other prior art documents (F3+F4 and F5+D7, respectively).
In the preliminary opinion, the Opposition Division was of the opinion that none of these attacks were deemed to be sufficient for revocation of the patent. However, based on its own motion, the Opposition Division considered F4 as the closest prior art. Further, the Opposition Division considered the subject-matter not to be based on an inventive step in view of F4 and F5.
In the oral proceedings, the Opposition Division forced the Opponent to "pick" just a single closest prior art as starting point. Opponent selected F5 as the closest prior art for the discussion of inventive step. Starting from F5, the Opposition Division came to the conclusion that the subject-matter of the independent claims is based on an inventive step. No further starting point for inventive step attacks was allowed by the Opposition Division in the oral proceedings despite Opponent expressing his intention to argue for other documents as potential closest prior art. This was documented both in the minutes of the oral proceedings under Rule 124 EPC as well as in the interlocutory decision.
The Opposition Division referred to the Guidelines, G-VII, 5.1 to justify this limitation of the inventive step discussion. Said section of the Guidelines generally states that the problem-solution approach may be based on different documents if showing that they can be considered as equally promising starting points. Further, said section of the Guidelines states that the problem-solution approach does not provide a forum for freely developing as many inventive step attacks as desired in the hope of having successsee also T 320/15, Reasons 1.1.2. Based on said section of the Guidelines, the Opposition Division considered the right to be heard to be met if a party has been notified that only a single starting point for inventive step attacks will be allowed and if other starting points (in the present case: only F3) raised by Opponent in writing are addressed in the interlocutory decision by the Opposition Division.
III. Reasons for refund of appeal fees
In its decision, the Boards of Appeal confirms that it is within the discretion of an Opposition Division to limit the number of inventive step attacks to discuss, as a reasonable number is dependent on the particulars of the case and procedural efficiency needs to be maintained. An Opponent is thus required to carefully select the most promising attacks.
However, if an Opposition Division intends to limit the number of inventive step attacks, a discussion about the relevance of additional prior art documents as a starting point is required to not violate an Opponent's right to be heard. In particular, this needs to be the case if a different prior art document will also be considered as a starting point in the written interlocutory decision (in the present case: F3). Additionally, this also applies if the Opposition Division already considers a different prior art as closer than the starting point(s) discussed in the oral proceedings. In this context, the Board of Appeal agrees with the consideration that the Opposition Division itself does not need to select such a document for discussion in the oral proceedings since examination of the facts on its own motion is to be applied restrictively in opposition proceedings (see also section 7.2 of the presently discussed decision T 2610/19).
The Board of Appeal considers the above to follow from sections 10 and 14 of T 1077/06, stipulating that only allowing written arguments are insufficient to meet the right to be heard when oral proceedings are requested.
Decision T 2610/19 is not to be misunderstood as allowing an Opponent as many inventive step attacks as desired in the hope of having success. Careful selection of suitable starting points for inventive step attacks is still required. However, an Opponent needs to at least be allowed a discussion of the merits of different prior art documents as starting points for an inventive step attack in oral proceedings in view of the right to be heard.
Some Chairpersons of Opposition Divisions allow an Opponent to decide about the order of inventive step attacks to be discussed. There is no clear case for a strategy regarding which documents should be discussed first as the closest prior art in oral proceedings in case an Opponent considers a different starting point as more promising than the Opposition Division in its preliminary opinion. Starting from the closest prior art considered as most promising by the Opposition Division may offer the highest chance of achieving revocation and may also be the most efficient approach. Subsequently convincing the Opposition Division that a different document is an equally valid starting point for a full inventive step attack discussion may be difficult in this case, though. Starting from the closest prior art considered as most promising by the Opponent may offer the chance to allocate more time of the oral proceedings to a discussion for convincing the Opposition Division while still allowing full discussion of an inventive step attack based on the prior art document considered as most promising by the Opposition Division. An adaptation based on how strict the Opposition Division is with generally allowing discussions and different inventive step strategies in the oral proceedings may be advisable.
Further, representatives of an Opponent should be prepared to discuss why different prior art documents should be considered as valid starting points besides just being prepared to discuss inventive step attacks based on different documents. In particular, such preparations are advisable in case the Opponent considers a different document as a more suitable starting point than the Opposition Division in its preliminary opinion or even just additional documents as an equally suitable starting point. Likewise, a representative of a Patentee should be prepared to discuss why a different document is not a valid starting point that the Opposition Division should, as a consequence, not allow further discussion of the complete inventive step attack for the sake of procedural efficiency.
Finally, if an Opposition Division is unwilling to discuss even the merits of different starting points for inventive step attacks, it should be referred to the presently discussed decision T 2610/19. If nevertheless no such discussion is allowed, representatives should ensure that the restriction to certain attacks and discussions is documented appropriately in the minutes to provide a basis for a potential refund of fees in the subsequent instance. We note that refund of fees may be granted ex officio by the Board of Appeal without a request by appellantsee Case Law of the Boards of Appeal, V.A.9.2.. However, rejection of an appeal fee refund request will not result in any adverse legal effects. For example, unlike in civil procedures in at least some national jurisdictions (such as Germany), rejection of such a request will not result in having to at least partially reimburse the other party.