The patent relates generally to a method for accessing a service and a corresponding device.
Brief outline of the case
The patent was maintained in amended form. The two opponents appealed the decision of the OD. An intervention occurred during appeal.
The MR was deemed lacking IS and the AR was not admitted in the procedure.
The patent was thus eventually revoked by the board.
The proprietor filed a petition for review under Art 112a.
The EBA held the petition clearly inadmissible and clearly unallowable.
We will concentrate on the admissibility of the petition, i.e. whether an objection under R 106 was validly raised by the proprietor during the OP.
The proprietor’s point of view
The proprietor filed a request for correction of the minutes, submitting four items for correction.
The petitioner=proprietor submitted that the required objection under R 106 was raised. During the discussion of the admittance of the AR, it made an unequivocal statement that failure to admit the request would be a violation of its right to be heard. This alone had to have been sufficient for the board to recognise the objection as one under R 106.
The proprietor considered its single statement about the right to be heard as a recognisable objection, so that repeating or confirming it once more at the end of the OP was not necessary.
The events during the OP before the board and after notification of the decision
From the minutes it transpires that the issues of added subject-matter, N and IS for the MR and of the admittance of the AR were discussed without interruption. After the board’s deliberation on these issues, the chair announced that the MR was novel but did not involve an inventive step, and that the board did not admit the AR into the proceedings.
This was followed by a discussion on apportionment of costs. In addition to the substantive requests (dismissal or rejection of the appeals and/or the intervention, or maintenance of the patent on the basis of the auxiliary request), the minutes contain a request for costs to be apportioned, for the appeal fee to be reimbursed and for certain documents to be excluded from file inspection, as procedural requests made by the proprietor.
The written reasons correspond to the decisions announced at the OP, in respect of both IS and the admittance.
The reasons for the non-admittance of the AR are based on both Art 13(2) and 13(1) RPBA. It is not entirely clear whether the board consciously based the non-admittance on both provisions, either independently or together. The formal statement of the non-admittance only cites Art 13(2) RPBA.
The request for correction was refused by the board.
The decision of the EBA
The requirement to raise an objection under R 106
It remains undisputed that the proprietor raised the issue of a possible violation of its right to be heard during the discussion on the admittance of the AR, even before the decision on non-admittance was announced, and that no further comments were made after the non-admittance was announced. It is also undisputed that the proprietor did not explicitly mention R 106.
The EBA recognised that a valid objection under R 106 need not contain a direct and explicit reference to that rule.
What matters is not the formal wording of the objection but its substance as it could be understood by the board. The question is not what the party may have intended subjectively, but how the party’s statement could be understood objectively.
An objection under R 106 must be expressed by a party in such a form that a board is able to recognise immediately and without doubt that an objection under R 106 is intended. An objection under R 106 is in addition to and distinct from other statements.
By ensuring that a board can correct errors before a final decision is taken, R 106 also ensures that unnecessary petitions for review are avoided.
Under the circumstances as apparent from the file, the board had no reason to assume that the proprietor’s argument on the right to be heard was already a formal objection pursuant to R 106.
A mere reference to the right to be heard does not immediately become an objection under R 106. It normally needs to be formulated after the alleged procedural irregularity and cannot be formulated prematurely.
For this reason alone, the board did not have to assume in the course of the oral proceedings that the proprietor intended to make an objection under R 106, even if it did take note of the remark on the right to be heard during the discussion on the admittance.
For the EBA, it seems very unlikely that the board would leave a recognisable objection within the meaning of R 106 entirely without comment, let alone an explicit and separate decision. Nor does the decision not to admit the AR prove that the board was aware of a formal objection. Other theoretical possibilities, such as the board forgetting or deliberately refraining from reacting to the objection, would seem just as unlikely as the proprietor’s version of events.
For the EBA, it seems much more likely that the board did not take note of the objection and therefore did not react. In this way, the absence of any discernible reaction from the board is a further indication that the board could not perceive the right to be heard argument as a recognisable objection within the meaning of R 106.
In a situation such as the present case – where the board does not react in a recognisable and explicit manner to an intended objection under R 106 – a diligent party should normally insist on a discernible response from the board. Failure to do so will leave the party with an indication that weighs against its case.
Comments
Minutes of an OP and SPV
A complaint about the violation of the right to be heard filed without a previous request for correction of the minutes has, as a rule, little chance to be admitted, even if the SPV allegedly occurred in first instance, see T 417/18, Reasons 3.3 or T 2241/15, Reasons 3.2. In T 2241/15 the board also referred to R 6/14, reasons 7, R 15/09, reasons 4.1.1 and R 7/11, reasons 2.4.
The board will consider that what has happened is correctly transcribed in the minutes. As the board was not present at the OP, it can only rely on what is stated in the minutes. This is normal and does not deserve any discussion.
With the possibility of filing a petition for review, it was expected that the minutes of OP before boards would have some more substance. There has really been little change.
Necessity of an objection under R 106
The present decision makes it abundantly clear that it is not enough to ensure admissibility of an ensuing petition for review that a party mentions that its right to be heard before a board is not respected. R 106 has to be mentioned expressis verbis.
The considerations of the EBA about what was more likely than unlikely during the OP from the side of the board are rather speculative and fail to convince. They give the best role to the board and blatantly ignore the concerns of the proprietor.
It has to be noted that the EBA recognised that a valid objection under R 106 need not contain a direct and explicit reference to that rule, but when a party declares during an OP before a deciding body of the EPO that its right to be heard has been violated, it necessary implies that it considers that a SPV hs been or is on the verge of being committed.
Violation of the right to be heard is the main reason for filing a petition for review. This alone should be sufficient for a board to consider that an objection under R 106 has been validly filed. The decision of the EBA might appear legally correct, but is no more than playing on words.
Independence of the BA/EBA
The present decision on a petition for review shows also that a proper revision instance should not be composed by members of the previous instance, even if it is composed by members not having taken part in the decision subjected to the petition. Those members can also be part of a board against which a party may file a petition for review.
Not only the BA, but also the EBA should be completely independent of the EPO, and the members of the EPA distinct from those of the BA.
The amendments carried out in 2016 to the structure of the boards do not really guarantee the independence of the BA and of the EBA.
https://www.epo.org/en/boards-of-appeal/decisions/r220006eu1
https://www.epo.org/en/boards-of-appeal/decisions/t201891eu1
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