The patent relates to an oesophageal electro catheter.
Brief outline of the file
The OD rejected the opposition and the opponent appealed this decision.
According to T 1198/17 of board 3.2.02 the patent was revoked.
In the present case, OP were held in person on 06.05.2022.
During the OP before the board, the proprietor raised an objection under R 106, which was dismissed by the latter.
The proprietor filed a petition for review.
The petition for review was considered clearly not allowable by the EBA in its reduced composition under R 109(2,a).
The procedure up to the OP
The OP was originally scheduled as in-person OP.
Asked about the form of the OP, the opponent wished to have in-person OP and the proprietor that it wished to have the OP held as a ViCo.
The proprietor filed a statement regarding the personal situation of its representative, Mr Aldè, in support of this request. Mr Aldè’s reasons for wanting a videoconference were connected with the COVID-19 situation.
Mr Aldè therefore did not attend the OP, instead the proprietor was represented at the in-person OP by two colleagues of Mr Aldè, Mr Weigel and Mr Huber.
The procedure before the board
The minutes of the OP before the board state that after deliberation, the Chairman announced the opinion of the board that all of the requests discussed contained added matter.
The proprietor then submitted that its right to be heard had been violated as it had only presented arguments on AR 12 and 13. The Chairman decided to reopen discussions on this point. The proprietor requested an interruption of the oral proceedings.
After an interruption of three quarters of an hour, the minutes state that the Petitioner said it would not present any further arguments on AR 1 to 22 and submitted AR 23 to 28.
The board found that the opponent had not filed new arguments, and thus had not amended its case. Hence there were no exceptional circumstances justifying the admission of AR 23 to 28.
The board’s point of view about the non-participation of the original representative
In its final decision, the board pointed out that the only issues raised by the opponent as regards the OP before the OD concerned the opponent’s request for refund of its appeal fee due to an alleged violation of its right to be heard before the OD.
The Board decided against the opponent on this point and noted that it was not apparent to the board how the proprietor could be adversely affected by the fact that Mr Aldè did not participate in the discussion.
The proprietor’s point of view
The minutes established by the board are incorrect
The proprietor claimed that the paragraph on page 1 of the minutes of the OP before the Board is false: Mr Weigel and Mr Huber never said they no longer objected to in-person OP.
Holding of OP in person rather than by ViCo
The proprietor argued that the refusal of the board to hold the OP as a ViCo led to consequences which amounted to a violation of the right to be heard.
Point 2 of the complaint under R 106 concerned an alleged violation of the right to be heard due to the holding of in-person OP, which meant that Mr Aldè could not attend.
The violation of the proprietor’s right to be heard arose because the opponent made statements regarding the OP before the OD that Mr Weigel and Mr Huber could not respond to, because, unlike Mr Aldè, they had not been present at these OP.
Such a situation would not have arisen if the OP before the board had been held by ViCo, which would have meant that Mr Aldè could have attended them.
The proprietor suggested that the change of representative from Mr Aldè to Mr Weigel and Mr Huber in itself negatively affected the proprietor, this implicitly being a violation of the right to be heard.
Incorrect exercise of the discretion by the board
The proprietor was not able to react to the board’s change of mind, compared to its preliminary opinion, on the issue of compliance with Art 123(2).
The proprietor argued that as the board admitted the opponent’s new added matter arguments, it was only fair to admit AR 23 to 28 that addressed these new arguments.
In its petition for review, the proprietor repeated that the board had incorrectly exercised its discretion in deciding not to admit AR 23 to 28. This was because the opponent had effectively amended its case, contrary to what the board decided.
Since he was not able to react to the board’s change of mind, compared to its preliminary opinion, on the issue of compliance with Art 123(2). The board should have admitted AR 23 to 28 into the proceedings.
For the proprietor this amounts to a ground for petition under Article 112a(2,d) in combination with R 104(b), in that the board decided on the appeal without deciding on a request relevant to that decision.
No decision on an aspect relating to Art 83
The proprietor further noted that the decision neither contains arguments concerning Art 83, nor reasoning as to whether the expression: “adapted to detect a central value and the deviation” was considered to be an intended use by an external entity and not a property of the catheter per se.
This feature was an essential feature in the discussion of N and IS, hence this lack of reasoning is a procedural defect under Rule 104(b).
The EBA’s position
The EBA considered the petition to be admissible, but clearly not allowable.
Minutes of the OP before the board
The EBA noted first that no request was made to correct the minutes of the OP before the board. The accuracy of the minutes was questioned for the first time in the petition for review.
According to R 6/14, Reasons 7, parties are obliged to submit a request for correction of the minutes of oral proceedings promptly after receipt of the minutes.
As the objections to the accuracy of the board’s minutes are belated, the EBA therefore considered the board’s minutes to be an accurate account of the OP.
OP not held as a ViCo
The EBA was unable to identify any basis in the proprietor’s arguments for finding that its representation by Mr Weigel and Mr Huber, instead of by Mr Aldè, infringed its right to be heard.
The sole ground put forward is that Mr Weigel and Mr Huber were not able to recall the events of the OP before the OD as well as Mr Aldè would have been able to. This was because Mr Aldè had attended these OP, whereas Mr Weigel and Mr Huber had not.
The EBA noted that the issue from the OP before the OD that was discussed before the board did not concern the proprietor, but the opponent. In addition, the board found against the opponent.
The EBA therefore noted that the discussion on what happened at the OP before the OD resulted in an outcome favourable to the proprietor, thus even if a violation of the right to be heard could be found on this issue, there was no prejudice to the proprietor.
The proprietor argued that “In this context it has to be considered that even several points are separately discussed throughout the OP, they are somehow strictly linked together, both by a temporal point of view and by a subjective point of view. Each argument influences the next arguments, even if they appear to be separate each other…”
In the above, the word “somehow” carries the burden of convincing the EBA that a violation of the right to be heard took place. The EBA, however, needs to be told “how” the points are strictly linked together, and not left to fill in, ex officio, the details of the proprietor’s “somehow”. The proprietor’s argument, to the extent that it is understandable, appears to lack any logical force. The EBA sees no violation of the right to be heard.
Hence, the Petition is clearly unallowable on this point.
The board’s change of mind, compared to its preliminary opinion, on the issue of compliance with Art 123(2)
The EBA first noted that the proprietor did in fact react to the change of mind of the board, by filing AR 23 to 28.
This head of argument appears to be mainly concerned with the Board’s opinion that the MR and AR 1 to 22 had added matter problems, and its decision not to admit AR 23 to 28 into the proceedings.
The minutes and the R 106 complaint confirm that the proprietor had the opportunity to make submissions on the above issues. A violation of the right to be heard does not appear to be the issue here and has not been raised by the proprietor. The proprietor bases its Petition on this point on R 104(b) that the Board decided on the appeal without deciding on a request relevant to that decision. The proprietor has not identified which of its requests were not decided upon. The EBA itself is unable to identify any such requests.
The proprietor suggests that the Board did not correctly exercise its discretion when considering whether to admit AR 23 to 28. The EBA notes that improper exercise of such a discretion is not a ground for a petition for review, under Article 112a(2,d) in combination with R 104(b).
The Petition thus also appears to be clearly unallowable under this head.
No reasoning in the decision on the proprietor’s technical statement
The proprietor’s technical statement, in the context of Art 83, was discussed at the OP before the board.
The decision of the board contains no discussion of sufficiency, novelty or inventive step. The decision found the MR and AR 1 to 22 to contain added matter. No other requests were admitted into the proceedings.
The EBA noted that the Board was, from the proprietor’s point of view, positive on sufficiency of disclosure, as set out in the minutes, see minutes, page 6, second paragraph, and negative on added matter.
Thus, the board was able to write its decision dealing with the case purely upon considerations of added matter.
There was hence no need for the decision to contain reasoning on the Petitioner’s technical statement.
The Petition is thus also clearly unallowable under this head.
It would have indeed have been a surprise if the petition for review would have been at all allowable. this does not mean that that the attitude of the EBA and of its chair can be fully endorsed.
From a problem of holding in-person OP instead of holding OP by ViCo, the proprietor tried to “enlarge” his reasons to be dissatisfied with the decision of the board.
Querying the minutes
The present decision reminds the parties that if they want to query the minutes, they have to do this shortly upon receipt of the minutes.
Claiming a substantial procedural violation without at least filing a request for correction of the minutes has little chance of success. This is valid for OP before the first instance or before the boards.
In T 417/18, the applicant argued that it was not given the opportunity to react to new N objections raised by the ED in the annex to the summons. His right to be heard was therefore not respected. The board did not see any breach of the right to be heard, as the applicant did not even request a correction of the allegedly “incorrect” minutes
OP not held by ViCo
In its decision, the board explained that it maintained OP in-person as requested by the opponent with a submission referring to G 1/21. The position of the board that in May 2022 parties were not impaired in attending in-person OP is understandable. The board merely applied the “gold-standard” defined in G 1/21.
The reasons for impairment of a representative were not any longer valid, and the original representative could have turned up. It is however worth noting that the obligation to explain why another representative cannot replace the original representative has been deleted in the RPBA20. Here it was the personal decision of the representative not to turn up at the OP. This is quite different.
The proprietor’s argument that things were discussed before the board which were not know to the two new representatives is a very week one. It was clear that the discussion concerned exclusively the opponent and its request for reimbursement of the appeal fee due to the opponent being of the opinion that its right to be heard by the OD had not been respected.
When there is a manifest problem of added subject-matter, it does not appear absolutely necessary for the original representative to be present. This is the more so, since added subject-matter had been a topic all along the procedure.
In the present case, the board decided to abide by G 1/21. Some boards follow this line, e.g. T 274/20 or T 2432/19, both commented on this blog. This is not the case for other boards. Some even consider that the quality of ViCos has so much improved that G 1/21 can be ignored. See for instance T 758/20 or T 618/21, both commented on this blog. That by doing so, the respective boards did not abide by Art 21 RPBA21 requires a special mention.
It is interesting to note that the president of the boards, which was excluded under Art 24(3) in case G 1/21, was chairing the EBA in the present case. It might have been preferable if the president of the boards had not chaired the present EBA under Art 112a. Its manifest prejudice in favour of OP by ViCo is well known.
The fact that, in the present case, the decision of the EBA was in favour of in-person OP does not make the preceding views of the president of the boards being obsolete. In general, in view of the history, the president of the boards should deport himself in any cases dealing with the application of G1/21.
The discretion given in Art 15a(1) RPBA21 should be better specified in view of G 1/21. This does not need a new referral to the EBA under Art 112.
Non uniform application of the discretion given to the boards by the RPBA
It is clear that the discretion given to the boards by the RPBA21 is very large. Would it not be the task of the president of the boards to bring some clarification/unification in this matter? A new referral on OP by ViCo does not seem at all necessary. the right might be that they would become the new gold-standard.
Production/productivity of the boards should not be the main, not to say the only, concern of the president of the boards.
The procedural lottery presently going on at the boards is not helping the parties. Some predictability, within the discretion given to the board, is badly needed. The same applies with deletion/combination of claims.
Influence of procedural considerations priming substantial considerations
One interesting point to raise here is a change from a N objection to an IS objection when the board has decided during OP that N is given. Under T 131/01, and all decisions cited in the latter, this was not considered a new ground of opposition. This is still the case, but the boards have now found a new trick not to look into the matter.
The opponent cannot be held responsible for the change of mind of the board in matters of N and at least, the objection of lack of IS should be discussed. That this might possibly have a negative effect on the production/productivity of the boards is not to be denied, but I would claim that in such a situation, the right to be heard of the opponent has not been respected for fallacious reasons.
The other objections raised in the petition
It is manifest that the main reason for the petition was the refusal to hold OP by ViCo as requested by the proprietor. This reason was not more convincing than any of the other ones.
In order not to leave it at this, the proprietor scraped the barrel to find other reasons to complain. The EBA did not buy any of them.
When the EBA claims that all the requests were discussed, it is certainly correct from a strict legal point of view. It does however not change the fact that AR 23-28 were not discussed in substance as wished by the proprietor.
The present decision shows also once more that the proprietor has to be much more proactive in first instance or when entering appeal. Any late filed request has barely a chance to be admitted. After two full years of RPBA, the penny should have dropped.
Some statistics about petitions for review
219 petitions for review have been filed and 37 are still pending.
174 decisions on the substance have been taken.
Only in 10 cases the decision of the board was set aside and the procedure reopened. One case is still pending. Only in 2 of those the decision was amended after the petition. In all other cases, the original decision of the board was upheld.
15 were deemed not admissible/not allowable
36 were deemed clearly not admissible
113 were deemed clearly not allowable.