The patent relates to a stereolithography technique used to produce three-dimensional objects (additive printing).
Brief outline of the case
The opposition was rejected and the opponent appealed.
During appeal, the opponent filed prior art under Art 54(3), D 8, which was N destroying for claim 1 as granted. This document was admitted under Art 13(1) RPBA.
None of the AR maintained in appeal were admitted under Art 13(2) RPBA.
The patent was thus revoked.
The proprietor filed a petition for review.
The petition for review was dismissed by a 3 member composition of the EBA under R 109(2,a).
The proprietor’s point of view
Admission of D8
The proprietor/petitioner considered that the board made a legal mistake as to which provisions of the RPBA 2020 to apply when considering the admission of D8. The proprietor only became aware of this legal mistake when it read the minutes and the board’s decision.
Thus, the proprietor was not in a position to make a R 106 objection in this respect during the appeal.
Later, the proprietor argued that the board decided on the admission of D8 without deciding on a request relevant to that decision, i.e. the MR filed by the proprietor during the appeal procedure to not admit D8.
Non-admission of AR 1, 1A, 3 and 4
The proprietor also considered that the board’s decision not to admit AR 1, 1A, 3 and 4 was wrong and in addition constitutes a violation of its right to be heard. The consequence of these decisions was to deprive the proprietor of the ability to file an amendment to overcome the disclosure of document D8, this constituting a violation its right to be heard.
The proprietor claims to have made a R 106 objection during the OP by making reference to a potential violation of Art 113(1). As evidence of this, the proprietor referred to its request, to amend the minutes.
Refusal to remit
The proprietor further argued that the refusal to remit the case also amounts to a violation of the right to be heard as it was deprived of the possibility to comment on document D8 and to amend the patent based upon the disclosure of this document.
The proprietor argued that it made an objection in accordance with R 106, as regards non-remittal, at the OP. As evidence of this, the proprietor referred here as well to its request to amend the minutes.
Following the requests for amendment of the minutes, the board sent a communication to the proprietor rejecting its requests to amend the minutes. The proprietor was given two months to respond to this communication. The proprietor did not file any response.
The EBA’s decision
How an objection under R 106 has to be formulated
Objections pursuant to R 106 need to comply with two criteria.
First, the objection must be expressed by a party in such a form that the board of appeal is able to recognize immediately and without doubt that an objection pursuant to R 106 has been made. This is one condition which is additional to, and distinct from other statements.
An objection under R 106 must be something other than a protest or argument for the admission of auxiliary requests, or an alleged reference being made to a potential violation of Art 113(1). This is a precondition for a board of appeal to have been able to react immediately and appropriately by either removing the cause of the objection or, as provided in R 106, by dismissing it. It therefore ensures for the party and the public at large, legal certainty as to whether the substantive decision of the board of appeal is open to review pursuant to Art 112a. This is one of the evident purposes of the obligation to raise objections under R 106.
Second, for the same reason the objection must be specific, that is the party must indicate unambiguously which particular defect of those listed in paragraph 2(a) to (d) of Art 112a it intends to rely on.
This follows from the wording of Rule 106 EPC itself, as already stated in para 2.1 of R 4/08.
Decision to admit document D8
The proprietor has failed to identify a request that the board did not decide on when deciding to admit document D8. The EBA cannot identify any such request.
The request allegedly not decided on, i.e. “to not admit document D8”, was decided on in the board’s decision.
This part of the petition is thus clearly not allowable.
Non-admission of AR 1, 1A, 3 and 4
The board’s decision does not appear to record any objections during the appeal proceedings that could be considered to be R 106 objections. For the EBA, a Rule 106 statement must be something other than a protest or argument for the admission of AR, or an alleged reference being made to a potential violation of Art 113(1).
Refusal to remit
The EBA noted that the final requests of the proprietor, as set out in the minutes, indicate that the remittal request was conditional upon the admission of one of the AR into the proceedings. The proprietor has not sought to amend this part of the minutes. This supports the conclusion that the proprietor made no R 106 objection as regards remittal, as its remittal request had become irrelevant once the board had decided not to admit any of the AR.
Correction of the minutes
According to R 6/14, Reasons 7, parties are obliged to submit a request for correction of the minutes of OP promptly after receipt of the minutes.
The EBA pointed to the fact that minutes were send out one week after the OP whereas the proprietor waited 4 months after the OP to request amendment. The request for amendment was thus not sent promptly after the receipt of the minutes.
As a consequence of the failure to make a R 106 objection during the appeal proceedings regarding the non-admission of the AR, the EBA found this aspect of the petition inadmissible.
Comments
Request for correction of the minutes
It is clear that alleging that a decision of a deciding body has committed a violation of the right to be heard, the minutes have a great importance. This is even more the case when it comes to a petition for review.
The deciding body has always the possibility to refuse the requested amendment. In any case the request for amendment has to be filed promptly after the receipt of the minutes and not four months after the OP.
As the proprietor had clearly missed the opportunity to file an objection under R 106, it was an interesting move of its part to request an amendment to the minutes. This move however failed.
Filing an objection under R 106
An objection under R 106 has be loud and clear and specific so as to be directly understandable for a board. A board should be put in a position in which it can either remove the cause of the objection or dismiss it.
It cannot be hidden among other objections, like a non-respect of Art 113(1). This is too vague for the EBA.
Legal certainty as to whether the substantive decision of the board of appeal is open to review pursuant to Art 112a should be achieved.
https://www.epo.org/en/boards-of-appeal/decisions/r230002eu1
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