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R 4/22 – Petition for review and admissibility of requests

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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Following an appeal of opponent 3, the patent was revoked by decision T 1786/16.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.

R 4/22

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Comments

10 replies on “R 4/22 – Petition for review and admissibility of requests”

Hi Daniel.
I don’t know if you are aware of the withdrawal of the two CRISPR appeals by the University of Berkley citing this inconsistency of approach of the Boards to admittance of amendments in appeal proceedings as grounds for not risking their “Nobel-prize winning invention” to “the repercussions of a decision handed down in such circumstance” (see section B in https://register.epo.org/application?documentId=M1AHGT5FL46CHI6&number=EP13793997&lng=en&npl=false with a similar letter being issued on another of the UC Berkley’s CRISPR cases).
UC Berkley’s representatives referred to the decision in T 2229/19 (Lys-C for processing BoNT A/IPSEN BIOINNOVATION) 06-10-2023 where admittance of a request deleting dependent claims to deal with an alleged added matter objection where the Board had departed from the original view of the Opposition Division was refused on the grounds that although the deletions addressed the issue of added matter, the Board considered that they would not address a lack of sufficiency, a matter which had yet to be discussed in the appeal (see T2229/19 Reasons paragraph 26). Whether that constitutes an arbitrary or manifestly unlawful exercise of a Board’s discretion will be determined in Petition for Review R14/24 which is pending before the EBA. How soon we might get a decision on that case is anyone’s guess. Not least as Petitions for Review such as R1/20 (Violation fondamentale de l’article 113(1) CBE) 12-07-2024 are currently taking four-and-a-half years to resolve.

Avatar photoDaniel X. Thomassays:

Hi,

Thanks for your comments.

I was not aware or the withdrawal of the two CRISPR appeals by the University of Berkley.

I have just noted that a certain number of revocation decisions had been set aside as the priority has now be deemed valid following G 1/22 and G 2/22.

T 2219/19 is once more the illustration of the very hap hazard way boards are behaving in procedural matters, here deletion of claims.

Deletion of claims = no amendment of the proprietor’s appeal case
The deletion of method claims, product claims, dependent claims or alternatives in a claim request, is not to be regarded as an “amendment to the party’s appeal case”, if the deletion does not change the legal and factual framework of the appeal. See T 1480/16, T 2243/18, T 1792/19, T 1151/18, T 1857/19, T 2201/19.

Deletion of claims = amendment of the proprietor’s appeal case but admitted
The deletion of such claims or alternatives have indeed to be regarded as an “amendment to the party’s appeal case“. Accordingly, they have applied Art 13 RPBA and assessed whether to admit the request in exercising their discretion in view of the criteria set out in Art 13 RPBA, in particular in view of its impact on the factual and legal framework of the appeal case. See T 2091/18, T 1597/16, T 1439/16, T 1224/15, T 908/18, T 682/16 or T 168/16. The same applied in T 2295/19.

Deletion of claims = amendment of the proprietor’s appeal case but not admitted
Such requests were considered as an amendment to a party‘s case, they were not admitted even if they could be considered as not detrimental to procedural economy. See T 1259/17, T 482/19 or T 317/20. In T 2261/15 requests with deleted dependent claims were not admitted filed when entering appeal as not filed early enough, since the objections against those claims were present since the outset of the opposition and should have been filed earlier.

T 2219/19 can be added to the last list. I am not surprised that the proprietor filed a petition for review. Independently od the time it might take for deciding on the petition, I have noted that no objection under R 106 has been filed during the OP. My bet is that the petition will be deemed clearly inadmissible for this reason. Should it be admitted, it would will not be considered allowable as clearly not allowable as the proprietor has been heard on the reasons for the non-admissibility.

In a article of 21.05.24 of JUVE (https://www.juve-patent.com/legal-commentary/figures-show-boards-of-appeal-productive-but-its-only-half-the-story/), the boards have been criticised for their constant quest for productivity.
I quote: “The boards should also avoid basing too many of their decisions on formalities instead of looking at the technology. For years, users have criticised this aspect in what is otherwise a positive overall impression of the BoA.” What more has to be said.

It is a pity that that in procedural matters, the boards have become a lottery. It all depends at which board a file ends how discretionary decisions are taken. The present RPBA have given the boards a large amount of discretion.

In view of the very arbitrary way discretionary decisions are taken, without prescribing the boars how to act, the Presidium of the board and/or the president of the boards should bring in some predictability. The latter is, alas, more concerned with production/productivity than by issuing decisions which are sound and understandable.

Given the abysmal statistics on success for Petitions for Review, you are probably right to expect R14/24 will ultimately get rejected. Certainly, the odds are in your favour.
Probably it won’t make any difference in the end but the facts in T2219/19 can be distinguished from the other cases of non-admission that you mention.
The deletion of dependent claims in both T482/19 and T317/20 was found to shift the focus of the appeals (see T482/19, Reasons 5.7 & T317/20, Reasons 37 &38) whereas in T1259/17 deleting dependent claims was considered not to resolve an Art 123(2) objection and claims were rejected on that basis (Reasons 2.5 – 2.7).
T1261/15 is a bit of an outlier. T2261/15 contains no discussion of whether deletion of dependent claims constitute “exceptional circumstances” which would justify acceptance of a late filed amendment. Rather the Board in that case refused an auxiliary request deleting dependent claims from an earlier filed request solely on the grounds that the proprietor could have filed the request at an earlier stage of the proceedings. However, ultimately, whether or not that was a correct interpretation of the RPBA was largely irrelevant as claim 1 in an auxiliary request which was admitted into the proceedings was considered to add matter, an issue which would not have been addressed by the refused request in any event.
It was, of course, the fact that the Board in T2219/19 refused to admit amendments which prima facie overcame objections which had been ruled on by the Board without shifting the focus of the appeal which was the concern raised by UC Berkeley which led them to withdraw their appeals.

Avatar photoDaniel X. Thomassays:

@ Roka Ur,

Thanks for your further comments. You are right in your analysis of all the different cases. By quoting those decisions, I simply wanted to show that if a board does not want to admit a request, it will do anything to find a good reason not to do so. I have more of those in my tablets. The problem is the absence of any predictability in procedural matters before the boards. This is why I quoted the article from JUVE.

There will soon be a blog about a decision of the EBA, R 13/21, where it was not a request which was not admitted, but an allegedly late objection. It was clear that the board was not minded to remit the case. The board admitted an AR and decided during the OP that it was novel, it refused to admit an objection of lack of IS based on this document. I can understand the frustration of the opponent.

All those decisions of the EBA show one thing: members of the EBA should not be at the same time members of the TBA or the LBA, and the president of the boards should not be at the same time chair of the EBA. But this is a different story.

Neither the boards nor the EBA are truly independent. As long as those two points have not been resolved, and there is no political will to change this situation. It is too convenient.

Sadly I think that was exactly the point that UC Berkley was making when they withdrew their appeals. If the Boards have a completely unfettered discretion to reject late filed requests, then the only sensible approach is to include every possible permutation of request in at first instance and on appeal – an approach which is completely impractical in any complex case facing multiple objections even when some of those objections may not be particularly well founded.
Keep up the good work and I look forward to reading your comments on R13/21 in due course

Avatar photoDaniel X. Thomassays:

Hi,

Thanks for your encouraging words.

As far as procedural aspects are concerned, there is no predictability whatsoever. This is a lottery as nearly each board handles the discretion given to the boards in the RPBA differently.

To be sure that a petition for review has no chances of success, this board, like some others, has decided that requests as to the admissibility are of substantial nature and disagreed with T 1006/21.

I have commented T 1230/22 in my blog and expressed my disagreement with the way board 3.2.01 handled it.

I have been attacked by the legal member of board 3.2.01. He considered that my attack was unjustified and tried to give me a lesson how the RPBA ought to be applied. I found the attack unjustified and made this very clear.

I will keep saying that the discretion given to the boards by the valid RPBA has ended in a real cacophony. The example of the CRISP patents being withdrawn should give food for thoughts, but most probably it will be like water on a duck’s back.

Normally I reply in English but I decided to make an exception and answered in German as the critic was in this language.
I just wanted to make sure that the legal member understood clearly what I said.

Anonymoussays:

If that comment was genuinely from a serving Board of Appeal member, and not somebody pretending to be him, I find it utterly astonishing that he has chosen to pick a fight in a public forum rather than – for example – engaging with criticism by means of a carefully-reasoned decision which addresses the perceived lottery effect.

In this respect I wonder if his comments are in line with Article 10(2) of the Code of Conduct: https://link.epo.org/web/case-law-appeals/code-conduct/en-CA-D-2021-21-CoC.pdf

Avatar photoDaniel X. Thomassays:

@ Anonymous

If you think that the comment in the present case stems a serving Board of Appeal member, and not somebody pretending to be him, you must know much more than I do.

Although I do not know who is acting under Roka Ur, I doubt that a serving Board of Appeal member has, in the present case, picked a fight in a public forum rather than – for example – engaging with criticism by means of a carefully-reasoned decision which addresses the perceived lottery effect.

I have received a comment from a serving Board of Appeal member but in a different case, T 1230/22, also presented in my blog. This member does, in general, disagree with my considerations about the lottery effect with procedural decisions of the boards. This serving member has not said anything about the case in suit.

As he wrote in German, I replied in German. I made my position abundantly clear and gave more reasons why I find the procedural decisions of the boards being a mere lottery. It is clear that the purpose of the RPBA is to strengthen the appeal procedure, but I gave some examples of the incoherent approach of the boards: deletion resp. merging of claims and admissibility of carry-over of requests. I could also have mentioned T 364/22, T 1242/21, T 1042/18, T 2482/22 and T 1042/18, all commented in my blog.

I have no opinion whether this serving Board of Appeal member has acted in line with Art 10(2) of the code of conduct of board members or not.

Anonymoussays:

Apologies if I was unclear. I was not talking about Roka Ur. I was referring to the person purporting to be BoA member Guntz who has commented on your post about T 1230/22, which you mentioned in your reply to Roka Ur above.

Avatar photoDaniel X. Thomassays:

@ Anonymous 31.10.24, with respect to your last comment:

You were indeed not clear, hence my differentiated reply in the present blog.

I was indeed surprised to receive from a serving Board of Appeal member a public criticism which was quite unspecific, besides the fact that my formulations displeased him and in which he tried to explain what the RPBA are about.

That as external observer I do sometimes have a different opinion about a decision of a board of appeal, especially in procedural matters, is nothing uncommon and part of freedom of speech.

It is clear that the appeal procedure is a front-loaded procedure, and this is, as such not to be queried. The rule of the game are known and sometimes I have also uttered criticism at parties’ tactics. If you seek a positive decision from a deciding body, be it a first instance division or a board of appeal, you do not start brushing it up the wrong way.

What is to be queried is the way that some discretionary decisions are taken when it comes to the admission or not of late submissions, i.e. objections and/or requests. This was the meaning of my detailed reply to the serving Board of Appeal member. I gave examples in which the attitude of the boards towards late submissions is extremely variable, and I see there the actual problem.

Whether the comments of the serving Board of Appeal member are in line with Art 10(2) of the Code of Conduct for Board of Appeal members is something for the authorities responsible for enforcing said Code of Conduct within the BA.
I have no opinion about it.

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