EP 2 055 483 B1 relates to a display device for machines for processing printing substrates.
Brief outline of the procedure
The patent was maintained in amended form by the OD.
Following an appeal of opponent 3, the patent was revoked by decision T 1786/16.
Pursuant to Art 12(4) RPBA07, the opponent’s objection under Article 123(2) EPC, was admitted in the procedure.
Pursuant to Art 13 (2) RPBA the proprietor’s AR attempting to overcome the objection of added matter was not admitted in the procedure.
The proprietor considered that its right to be heard was violated and raised an objection under R 106 against the non-admission of the AR. The objection was dismissed.
The EBA held the petition for review as clearly not allowable.
The proprietor’s point of view
The proprietor argued inter alia that, in a fair procedure, none of the parties is obliged to file requests on its own initiative during the procedure which undermine its own position and thus play into the hands of the other party.
Had the proprietor filed the AR immediately in response to the opponent’s first submission in its statement of grounds of appeal, the proprietor would most likely have drawn the board’s attention to the problem, since the AR, was overcoming a potential objection under Art 123(2).
For the proprietor, such an obligation would be contrary to the right to a fair trial under Art 6 of the ECHR.
The board’s view would have the consequence that the proprietor would in principle be obliged to react at an early stage of the appeal proceedings to every weak point raised by the opponents, however improbable, with AR, and thus to draw the attention of the opponents and also of the board to these weak points.
Such an approach would also not serve the requirement of procedural efficiency.
It was also not the task of the proprietor to assess the prospects of success of the opponent’s arguments
The board had failed to recognise in its decision that, in the sense of the right to a fair trial under Art 6 ECHR and taking into account the right to be heard under Art 113(1), it was imperative to take into account injustices that could arise from the change of the RPBA, i.e. from the RPBA 2007 to the RPBA 2020.
The EBA’s decision
No review of a discretionary decision of a BA
The non-admission of the AR is based on the exercise of discretion by the board pursuant to Art 13(2) RPBA.
An exercise of discretion by a board regarding the admissibility of new submissions can only be reviewed if it is arbitrary or manifestly unlawful and thus constitutes a serious violation of the right to be heard.
In matters relating to the admission of new requests, the right to be heard is generally safeguarded if the party concerned has had the opportunity to comment sufficiently on the exercise of discretion in weighing up the admission criteria, cf. R 10/11, R 11/11, R 13/11, R 4/13.
In the opinion of the EBA, and without reviewing the exercise of the board’s discretion, the proprietor had not shown valid reasons for the existence of exceptional circumstances under Art 13(2) RPBA.
The change in the RPBA
The arguments of the proprietor relate to the relationship between Art 13(2) RPBA and the transitional provisions in Art 25 RPBA on the one hand and the right to a fair trial under Art 6 ECHR and the right to be heard under Art 113(1) on the other.
The case law of the ECHR gives no indication that restrictive rules such as the convergence approach should be fundamentally questioned or that their application should generally be denied compatibility with Art 6 ECHR.
On the contrary, according to the relevant case law, “compliance with formalised rules of civil procedure by which the parties ensure the resolution of a civil dispute is valuable and important” as it is capable’ of “limiting the margin of appreciation, ensuring equality of arms, preventing arbitrariness, ensuring the effective resolution of a dispute and a decision within a reasonable time and guaranteeing legal certainty and respect for the court”.
The right not to incriminate oneself
The right not to have to incriminate oneself, i.e. the nemo tenetur principle, only applies in criminal proceedings, as so stated in the legal literature, cf. Karpenstein, Konvention zum Schutz der Menschenrechte und Grundfreiheiten: Comment. 3rd ed., C.H. Beck 2022, pp. 235-238.
Withholding a fallback position
The EBA noted that the proprietor has not pointed to any case law which would support its contention that an obligation to file an AR prior to the admission of an objection which has been discussed in detail and has thereby already revealed the weaknesses of the patent would constitute a violation of the principle of equality of arms.
On the contrary, deliberately withholding a fallback position in accordance with the AR for tactical reasons until the OP seems to contradict the principle of equality of arms, since the opposing party has already disclosed the alleged weakness of the patent at an early stage and has thus fulfilled its duty to promote the proceedings
The case law of the ECtHR on the non-admission of a request or evidence relates in particular to the examination of whether a legitimate objective was pursued in a proportionate manner or whether there was “excessive formalism“. The EBA could not see any such circumstances in this case.
The change in the RPBA
The EBA pointed out that Art 12(4) RPBA07 applied to the submissions of both parties at the first level of the convergent approach, i.e. to the statement of grounds of appeal, including the new objection under Art 123(2), and the proprietor’s reply. Both submissions were filed before the entry into force of the valid RPBA.
Although the provision under Art 13 RPBA for further submissions may have tightened the criteria for the admission of further submissions, it applied equally to both parties.
It remains, that the formulation of the transitional provisions in Art 25 RPBA is at the discretion of the legislator.
For all these reasons, the petition for review was unanimously considered as clearly not allowable in the composition pursuant to R 109(2a+3).
Comments
Admissibility is of procedural nature and has nothing to do with substance
It has always been the fear of the EBA not to get engaged in substantial matters. This fear is understandable as the competence of the EBA under Art 112a is purely of procedural nature.
The exercise of discretion when it comes to admissibility is however not a decision in substance but a procedural decision.
By claiming that it is enough for a party to have been heard on admissibility in order to decide that its right under Art 113(1), has been respected, the EBA makes its own life very easy.
It is plainly manifest that a board will barely ever decide in an arbitrary manner. As the boards decide themselves on the correct exercise of discretion of divisions of first instance, they should accept that their exercise of discretion is reviewed by a revision instance. But for this the revision instance should be truly independent of the previous level of jurisdiction.
The situation would be different, if ordinary members of the EBA would not be at the same time members of a TBA or of the LBA, and the president of the EBA should not be at the same time president of the boards. But this is a different story.
No coherent approach of the boards in procedural matters
This position of the EBA could be accepted, if the boards would decide procedural matters in a coherent and predictable manner. This is by far not the case, as in procedural matters it has literally become a lottery before the boards. Similar situations are not dealt with in a similar manner and this is very frustrating for parties. Just a few examples: deletion of claims, combination of claims, carry over requests and admissibility of experimental data are dealt with very differently from one board to the next.
I am not pleading that a party having waited to hear the opinion of a board in order to file a submission could not be sanctioned. This was already the case of under the RPBA07. What matters here is the feeling not of only inequality of arms, but that of a lottery, which can be frustrating.
The RPBA certainly require appeal proceedings to be front loaded, but it is not always possible to foresee every possible move of the other party. This is best exemplified by a board having requested from the opponent to deal with all AR with were not discussed before the OD, without even knowing which AR would be pursued by the proprietor, see T 664/20, commented on this blog.
Some boards freely accept carry-over request, some are unnecessarily strict. After all, it is not the parties’ fault, if a division of first instance has decided upon a higher ranking request.
The position of the EBA in the present instance could actually revive the fear of applicants or proprietors that by filing AR against purely hypothetical objections, it could indicate how far they are prepared to limit acceptable requests to the deciding body and to the other party.
Invoking the ECHR
It was an innovative way of the petitioner to attempt tackling the problems of admissibility by referring to the ECHR.
When looking at the different ways the BA apply the discretion given to them by the RPBA, it is difficult to say that some decisions are not imbued with “excessive formalism”. This is however exactly what some boards and the EBA are doing.
Withholding a fallback position
It could be seen as innovative way to withhold a fallback position for fear of revealing the weaknesses of the patent, but it has proved highly ineffective. This was actually a very week argument from the proprietor and it is the point which can be agreed upon with the EBA. Hoping that a problem of added matter would not be noted by the opponent or the board is really hoping for a miracle.
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