EP 2 435 855 B1 relates to a fibre Bragg grating hydrophone comprising a diaphragm amplifier.
Brief outline of the case
The OD rejected the opposition and the opponent appealed.
In T 2284/17, the board revoked the patent for lack of N over prior art not mentioned in the ISR established by the EPO.
The proprietor filed a petition for review.
The EBA, acting under Art 112a, held the petition as clearly not admissible as no objection under R 106 has been filed during OP before the board.
In an obiter dictum the EBA considered that even it could have been admissible, the petition for review would have been unfounded.
It is interesting to note that the petition for review was lodged prior to notification of the written and reasoned decision of the BA.
Some of the arguments of the petitioner
For the proprietor,
- the board justified its decision on the basis of a very recent decision T 1791/16, which has not been communicated to the communicated to the proprietor;
- failed to inform the proprietor that T 1791/16 was published one month before the OP;
- failed to provide the proprietor with a translation of T 1791/16, which is published in English, whereby the in the language of the proceedings is French;
The proprietor further stated that it was not in a position to raise objections during OP, since board’s decision took it by surprise by quoting a very recent decision and that it had only become aware of the violations when reading the written grounds.
The EBA’s decision
For the EBA, the petition is clearly not admissible in the absence of an objection under R 106.
According to the minutes of the OP, the board’s chair quoted a passage from the headnote of T 1791/16, from which it follows that where a claim is ambiguous/unclear, all technically reasonable interpretations must be considered and invited the parties to submit their comments on the interpretation of the term ‘compressible fluid’ in the claim.
The proprietor complied with this invitation by submitting observations of a technical nature technical observations, without however raising any objection that its right to be heard had been violated, either because of the citation of the decision, nor of the invitation addressed to him to submit his observations.
The EBA noted that the petition for review was lodged after the notification of the minutes of the OP, but well before the notification of the written and reasoned decision of the board.
The EBA added that it is settled case law that the minutes of OP before a board does not constitute a decision. The minutes are not intended as a substitute for such a decision, nor do they fall within the specific scope of a petition for review within the meaning of Article 112a.
It therefore appears that the proprietor was relying solely on the assumption that the board considered that there was a lack of clarity, in order to reach a decision at the end of its deliberation on the N of claim 1 as granted.
It also appears from the minutes that when the board, after its deliberation, announced the lack of N, the proprietor did not take the opportunity to raise any objection to an alleged violation of its right to be heard, or even doubts as to the basis of the board’s decision.
For the EBA, the contested decision appears exclusively based on the interpretation and technical definition to be given to a term used in the description or the claims and does not in any way concerns an objection to clarity, contrary to what is argued by the proprietor.
In addition, it should be noted that T 1791/16 is not cited in the contested decision and there is nothing to indicate, either directly or indirectly, that it was used as a basis for the grounds of the decision.
No violation of the right to be heard occurred, and in the absence of an objection under R 106, the petition is clearly not admissible.
As a subsidiary, the EBA observed that a board is under no obligation to provide a party with a translation of a of a decision when it is in one of the official languages of the EPO.
Furthermore, the mere fact that the board may have referred to a decision of a TBA and by limiting itself to quoting the catchword of that decision, is not such as to adversely affect a party to the proceedings.
Finally, it should be noted that at no time did the proprietor requested a correction or amendment to the minutes.
Comments
Filing a petition for review before receiving the written decision is, to say the least, hazardous.
Minutes and SPV
Without at least a request for correction/amendment of the minutes, claiming that a procedural violation occurred is more or less impossible to prove. Furthermore, minutes cannot replace parts of a decision.
This is valid before the EBA in case of a petition for review, as well as before a BA when it comes to the review of a decision of the first instance.
The is established case law that an alleged procedural violation by a division of first instance can only be assessed from the content of the minutes. In the absence of a request for correction of the minutes, the board can only assume that the minutes reflect correctly what occurred during the OP.
Conversely a board can decide from the content of the minutes whether or not a substantial procedural violation occurred, but minutes cannot replace the decision or missing parts of it. See for instance T 417/18 or T 1294/16.
Recent SPVs
When looking at recent SPVs it is striking to note that, very often, decision and minutes do not tie up, and sometimes even are at odds. This shows that the examiner in charge drafts the decision without taking into what happened during the OP, the minutes writer drafts minutes without insuring himself that the minutes reflect the salient points of the decision, and the chair of the division signs the decision and the minutes without batting an eyelid.
Whether this is due to the fact that divisions of first instance are barely any longer sitting together, and certainly not during OP, or that production objectives have to be achieved at any cost, is outside the present topic.
Documents in an official language of the EPO
If not parties, at least their representatives, should be able to master documents published in the three official languages of the EPO, even if a document is not in the language of the proceedings.
Expecting that a first instance division or a board gives a party a translation of an EPO document published in one of the three official languages and used in the proceedings is simply unheard of.
A translation is only necessary if a document is not in an official language of the EPO. Then it is to the party submitting said document to provide a translation.
It does not appear expressly from the minutes of the OP before the board, that a copy of T 1791/16 has been handed out to the proprietor, but this appears implicit. The proprietor has never complained not having received a copy of T 1791/16, rather that it did not get a translation in the language of the proceedings.
https://www.epo.org/fr/boards-of-appeal/decisions/r220001fu1
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