EP 3 454 099 B1 relates to a display body.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board held that claim 1 as granted lacked IS over a document mentioned in the ISR established by the JP office.
As the AR were not dealt with in view of the rejection of the opposition, the board decided to remit to the OD for further prosecution.
The case is interesting in that the opponent requested remittal to hold the OP before the OD in person instead of by ViCo. This request was rejected.
The opponent’s point of view
The opponent alleged an infringement of its right to be heard, which may constitute a fundamental deficiency within the meaning of Article 111(1) EPC.
The opponent’s argument in support of its MR rests on the premise that, according to G 1/21, in order to safeguard the right to be heard, OP were in principle to be held in person.
This right could only be safeguarded if a party was denied its wish for in person OP for good reasons. Such good reasons, as for example travel restrictions, were absent in the present case.
The Decision of the President of the EPO of 22.11.2022, which made ViCo the rule for OP before the ODs and required parties to argue for exceptions, was not in line with the principles established in decision G 1/21. By relying on the Decision of the President rather than on G 1/21, the OD infringed the opponent’s right to be heard.
The board’s decision
The board noted first that both parties representatives were based in Munich.
OP in the form of a ViCo are OP within the meaning of Art 116 , cf. G 1/21, Reasons 30.
This conclusion was reached irrespective of any additional conditions, cf. Reasons 31. In particular, neither a general emergency, nor travel restrictions, nor the consent of the parties were regarded as prerequisites.
The EBA considered that, while suboptimal, OP by ViCo as such do not impair the right to be heard and the right to fair proceedings, cf. Reasons 40 and 43. A ViCo is a suitable format for OP, cf. Reasons 48. A violation of the right to be heard may nevertheless occur in individual cases, cf. Reasons 43. However, it is clear that the EBA did not regard the format of a ViCo as such to constitute a violation of the right to be heard.
The board could not discern, and the opponent has not demonstrated, how the opponent’s right to be heard was infringed merely because a format OP, which as such complies with Art 113 and 116 as well as with the right to fair proceedings, was imposed against its will. No such conclusion can be derived from decision G 1/21.
Accordingly, the board found no infringement of the opponent’s right to be heard and consequently no special reasons within the meaning of Article 11 RPBA to remit the case to the OD without reviewing the decision under appeal.
Comments
Unlike the board in T 1095/23, commented in the present blog, the present board did not chicken out.
The boars did however put to light a very selective reading of G 1/21, not to say a voluntary misreading of it. It is dishonest for the board to claim that in Reasons 31, the EBA considered neither a general emergency, nor travel restrictions, nor the consent of the parties were regarded as prerequisites.
In Reasons 31, the EBA merely explained why an OP by ViCo could be considered as an OP in the meaning of Art 116. The conclusions the present board when quoting Reasons 40, 43 and 48, might look correct at a glance, but have to be read in the context.
The present board has carefully avoided quoting Reasons 45, in which the EBA established the “gold-standard” in matters of OP: “a hearing in person is the optimum format or, to use a term well known in the field of European patent law, it is the gold standard. ….. It is also the format that the legislator had in mind when drafting Ar 116. Therefore, in-person hearings should be the default option. Parties can only be denied this option for good reasons”.
The opponent might have not been very lucky in its argumentation, but he made clear, that he was dissatisfied with the president’s decision on OP by ViCo.
Using the wording in G 1/21, OP in person can only be denied OP for good reasons. The board has not given a reply to this argument, but developed legal niceties to the detriment of the opponent.
If board’s want to receive the respect which is due to them, they should avoid either to chicken out from taking a decision or coming up with such a shoddy argumentation.
As there is no difference to be seen in Art 116 between OP before first instance departments and boards of appeal, the Order in G 1/21 should have read as follow:
“During a general emergency impairing the parties’ possibilities to attend in-person OP at the EPO premises, the conduct of OP before the boards of appeal, read the EPO, in the form of a ViCo is compatible with the EPC even if not all of the parties to the proceedings have given their consent to the conduct of OP in the form of a ViCo.” The referring board had never made a distinction between OP before first instance and before the boards. This difference was introduced by the EBA.
For the surplus, I simply refer the readers to my comments in T 1095/23.
By limiting, without any plausible reason, G 1/21 to the OP before the boards, the EBA has not been up to its duties, i.e. interpret the EPC in the meaning of Art 31 VCLT. Art 31 VCLT has been mentioned in G 1/21, Reasons 22, but the logical conclusion that Art 116 concerns OP before the EPO, irrespective of the instance, has not been taken, but rather carefully wiped under the carpet. We all now why.
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