CASELAW-EPO - reviews of EPO Boards of Appeal decisions

R 6/20 - A Public Prior Use only filed when entering appeal is late filed – This prevents any examination as to the merits of the PPU – A discretionary decision of a board will not be reviewed by the EBA under Art 112a

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The patent relates generally to hair trimmers, and more specifically to blade assemblies for use with hair trimmers

Brief outline of the case

The opposition was rejected by the OD and the opponent appealed this decision.

When entering appeal, the opponent brought forward an alleged public prior use based on a set of documents (D7 to D7.10).

In decision T 2227/15, the board did not admit the late filed PPU in the proceedings and the corresponding lack of N attacks based on the PPU.

The opponent considered that by not admitting the PPU and the corresponding lines of attack, its right to be heard was not respected and filed a petition for review under Art 112a.

The EBA dismissed the petition for review as being clearly not allowable.

The opponent’s=petitioner’s position

The petitioner asserted that, to comply with the right to be heard, the board would have had to deal with all the facts and arguments that the petitioner had put forward in the appeal proceedings.

This fundamental right would be completely stripped of its essence if a party were formally allowed to make statements, but had no right to an assessment of its submissions in substance and not in a mere formal and procedural manner.

The Board thus failed to comply with its responsibilities under Art 114(1) and 113(1).

According to the petitioner, its assertion of novelty-destroying PPU in the statement of grounds of appeal and the reply to the Board’s communication would have required the board to examine the facts pursuant to Art 114(1). The Board however remained completely inactive in this regard.

According to the petitioner, the Board did not, as required in R 8/15, “substantively consider” the petitioner’s submissions relating to the PPU made with the statement of grounds of appeal and the reply to the board’s summons. The board heard, i.e. took notice of, the submissions regarding the PPU, but failed to provide an assessment of the substance of their contents. This was in contravention with Art 113(1). At least a brief assessment would have been required before refusing admittance of the PPU and the corresponding attacks in order to determine the relevance of the PPU.

According to the petitioner, the provisions of Art 12 and 13 of the applicable version of the RPBA notwithstanding, in assessing possibly late-filed facts, evidence and grounds for opposition, the following three criteria must be examined:

  • prima facie relevance,
  • state of the proceedings (procedural economy),
  • reasons for filing late (potential abuse of process).

According to the petitioner, finding the evidence of PPU was impossible at the point in time when the opposition was filed.

This is due, first, to the departure of employees involved in the confidential project forming the basis of the prior use and, second, to obsolete, illegible software.

It was only by coincidence, when registering old inventory on the petitioner’s premises at about the time when the appeal was lodged, that a stand-alone computer was found on which the old programme version was installed. In addition, a set of old folders was discovered only in the course of this registration process. These folders contained contracts and documents of the project that was subject to strict secrecy; documents D7 were associated with that project.

Finally, according to the petitioner, the proprietor not having made any submissions before the OD or the BA, non-admittance of the prior use documents could not be based on the need for procedural economy.

The EBA’s position

The EBA set forth that the petitioner asserted a fundamental violation of its right to be heard under Article 113(1) on the basis of two procedural defects:

  • non-admittance to the appeal proceedings of the submissions relating to public prior use, in particular documents D7 (first defect),
  • not dealing with all the facts and arguments that the petitioner had put forward in the appeal proceedings in the written decision (second defect).

First defect

In the EBA’s understanding the petitioner is of the view that the “substantively considered” requirement implies that a board must deal with the all the essential formal and/or procedural criteria as well as the substantive ones.

This would mean in the case in hand that the board would have been required to not merely examine admittance of the submissions made on PPU on the basis of the procedural provision of Art 12(4) RPBA07, i.e. whether those submissions (facts and evidence) “could have been presented… in the first instance proceedings”.

The requirement that “the Board substantively considered those submissions” (catchword of R 10/18, point 1, second paragraph) should be given the meaning that “the Board considered the contents of those submissions”, with this consideration comprising matters

  • pertaining to admittance of facts, evidence and requests, and/or
  • relating to substantive law, i.e. the merits of a case

The EBA found that the board complied with the “substantively considered” as by applying the language of Art 12(4) RPBA07 it arrived at the conclusion that, having been in the petitioner’s sphere at the point in time when the opposition period had expired, the submissions on PPU (“the new novelty attack”) should have been filed in the proceedings before the OD.

There is no basis for the petitioner’s opinion that, in discussing none of the three conditions that, in its view are relevant for admittance, but applying the one condition of Art 12(4) RPBA07, the Board did not substantively consider its submissions on admittance.

Given that the submissions on PPU were not admitted, there was no point in discussing their merits, i.e. whether the respective evidence was novelty-destroying.

According to the EBA the board complied with the “substantive consideration” requirement of R 8/15 as affirmed in R 10/18, both in respect of admittance and merits.

Second procedural defect

Not being competent, i.e. not having jurisdiction to decide on the merits of a case necessarily implies that the EBA has no power to control or review the normal exercise a board makes of its discretion. The EBA referred to R 10/09, and R 6/17.

The admission of late-filed documents and/or other evidence is a matter for the board’s discretion and, therefore, as such not subject to review under Art 112a.

The EBA reminded that the following issues cannot be considered in review proceedings:

  • whether to admit a new request, e.g. R 10/11, R 11/11, R 13/11, R 4/13,
  • or a new document, e.g. R 10/09, R 17/11, under Ar. 12 RPBA07;
  • or under Art 13(1) RPBA 2007, e.g. R 1/13, R 4/14, R 6/17

In R 17/10, Reasons 2.4 in fine, it was held that the admission of late-filed documents and/or other evidence is a matter for the board’s discretion and, therefore, as such not subject to review under Art 112a.

The exercise of discretion is only subject to review if arbitrary or manifestly illegal, cf. R 10/11, Reasons 5.2, thereby involving a fundamental violation of the right to be heard, cf. R 9/11, Reasons 3.2.3and R 17/11, Reasons 10.

A petitioner can succeed only if it can be demonstrated that the board declined to admit auxiliary requests A and B into the proceedings arbitrarily or on grounds that were not relevant to the exercise of its discretion, thereby unlawfully depriving the petitioner of its right to have these requests admitted and discussed in full.

In T 2227/15, the Board declined to admit the submissions on PPU on the because “submitting the public prior use novelty attack for the first time in appeal proceedings is not justified“. The “archiving of evidence supporting the alleged public prior use lay completely within the sphere of the appellant“.

Furthermore, the board was “not able to identify any new surprising element in the minutes of the OP before the OD or in the impugned decision that could justify submitting the alleged PPU after opposition proceedings, since the patentability of the subject-matter of claim 1 as granted was already discussed in the written phase of the opposition proceedings…”.

The EBA further held that Art 12(4) RPBA07 is in line with Art 114(1) and 113(1).


Late filing of a PPU by the opponent

The aim of the RPBA, including the RPBA07, was to clearly define the moment in time when a party’s case is considered to be complete, so that the board is able to assess a case in its entirety and, subject to oral proceedings, take a decision. This moment is fixed objectively by the rules and no longer subject to the procedural strategy of the parties.

Claiming that the board should examine ex-officio the substance and the merits of a late filed submission was doomed to fail. If this would be allowed, the setting of a period of 9 months in which an opposition can be filed, would become moot.

Another way of formulating it: Art 114(1) is not there to compensate for the shortcomings of parties to opposition and appeal. Even if the PPU would have been late-filed before the OD, the OD had the discretion not to admit it. As long as this discretion was exercised in a correct way and according to the right criteria, a BA would not review a discretionary decision of an OD.

Any prior art within the sphere of an opponent should be filed within the 9 months opposition period. If it is filed outside this period, the likelihood that it will not be admitted is very high, even if it is not considered as an abuse of procedure by the opponent.

No revision of a discretionary decision of a BA

Whilst a discretionary decision of a first instance division can be reviewed by a BA, it appears regrettable that a discretionary decision of a board will not be reviewed by the EBA under Art 112a.

In the present case, the board exercised its discretion in a correct way and according to the right principles as set out in the valid RPBA.

However, it has to be noted that, especially the RPBA20/21, have given a large discretion to the boards and looking at case law, this discretion can go in various directions.

In procedural matters it has become a kind of lottery for appellants and respondents. Depending on the BA receiving a case, similar situations are handled in a very dissimilar fashion.

If the EBA is not willing to review the discretion exercised by boards, the RPBA should be adapted such that, in principle, like situations are decided in a similar way. As examples of the different procedural treatments one can think of deletion or combinations of claims and deciding on the form of OP.

The RPBA20/21 are due to a revision in this respect.


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