EP 2 500 151 B1 relates to a machine and method for cartoning or packaging articles, in particular of articles with a tapered shape like the capsules, cups, etc.
Brief outline of the case
The OD had rejected the opposition and the opponent appealed.
The OD held that a prior use “Caffitaly”, could not be considered as prior art. The OD decided, after having heard Mr. G. as a witness, that the during an inspection in the premises of “Caffitaly” the witness was implicitly bound by a NDA.
The Court of Milan found, independently of the OD, that the witness was bound by a NDA.
In its decision T 1841/18, the board disagreed and considered that the witness was not subject to a NDA. It noted, inter alia, that the findings of the Court of Milan ware only based on a written statement of the witness and not by hearing the witness.
For the proprietor, the opponent’s failure to appeal the judgment in respect of the finding of a NDA by the Court of Appeal of Milan constitutes a conduct that equates to an implicit “waiver” by the opponent of the part of its appeal relating to the facts that are the subject of those findings, and that the “waiver” limits the power of the board, since boards must not base their decision on unsubmitted or waived grounds of appeal.
The board dismissed the proprietor’s arguments relating to “res judicata” effect of the final decision reached in Italian litigation proceedings. For the proprietor, the binding effect of the Court of Appeal of Milan’s decision came from the operation of the Lugano Convention, EU Regulation 44-2001, and Art 125. The board held that they cannot be binding for the proceedings before the EPO.
The board found that the proprietor’s defence of the N of claim 1 to be late and did not admit it under Art 13(2) RPBA. The board further decided not to remit as requested by the proprietor.
The proprietor also requested that a decision on taking of evidence be issued to commission an expert on Italian law, and that a question was referred to the EBA. Both those requests were rejected and eventually the patent was revoked for lack of N over the prior use. AR, filed in opposition, but without substantiation were not admitted for this reason, cf. Art 12(3+5) RPBA.
The proprietor’s petition for review was unanimously rejected as being clearly inadmissible or unallowable.
The EBA’s decision
It will only be quoted insofar as the admissibility of the petition has been acknowledged.
Application of R 106
As regards the right to be heard in respect of “res judicata”, “Lugano-Art 125” and “waiver”, the EBA considered that the petitioner was not in a position to object until it had seen the written decision of the board. These grounds of the petition were therefore admissible.
As regards the right to be heard in respect of the refusal of the board to appoint an Italian law expert and to refer questions to the EBA, the petitioner has not provided any arguments as to why it did not make a R 106 objection at the OP before the board.
The EBA’s position on the waiver
For the EBA, it is indeed the case that the decision does not refer, in terms, to the “waiver” argument.
For the EBA, the end result of the boards considerations was that it did not consider itself bound either by the results of the Italian litigation or the positions taken by the parties in this litigation.
The EBA added that, although in an ideal world, it would have perhaps been good drafting for the board to explicitly list the “waiver” argument as being amongst those arguments that did not convince it. The EBA however noted that the word “waiver” occurs a single time in a single paragraph, para 63, out of a total of 72 paragraphs, and once again in a footnote 9 to this para in the documents mentioning the “waiver”.
In view of the further circumstances the EBA held that it is therefore understandable that the board did not seek to draw attention to this term in its final dismissal of the arguments set out.
The EBA thus did not consider that the precise language which the board used by way of a reference to, and a summary of, a document, can, in this case, be criticised. A board must have a considerable degree of freedom in the language it uses to refer to and summarise the documents before it.
The board’s reasoning might be brief, nevertheless, in the light of the discussion of the key issue of prior public use that took place in the decision, it appears that the board fully took into account the proprietor’s arguments and the written decision enables the proprietor to understand, on an objective basis, the reason for the decision.
The EBA thus found that the omission of the word “waiver” in the board’s final reference to a document that was before it does not support a finding that the petitioner’s right to be heard was violated.
Comments
One can agree or not with the EBA’s decision. It has to be taken at face value.
It is however interesting to note that the EBA will undertake everything possible to get a board of the hook of a violation of the right to be heard.
Some formulations are nevertheless not really convincing, for instance:
- “it is understandable, that the board did not seek to draw attention..”
- “it appears that the board fully took into account the proprietor’s arguments”
- “the written decision enables the proprietor to understand, on an objective basis, the reason for the decision”
With such statements, more or less everything is defendable, and allows the conclusion that the right to be heard has not been violated.
Lugano Convention, EU Regulation 44-2001, and Art 125
In its decision, the board held that it was not bound by a final decision of a national court. This point of view is correct. I have never seen the EPO following a decision, procedural or not, of a national court.
Those points were not as such part of the petition and hence the EBA, acting under Art 112a, had no reason to discuss them.
The EBA, acting under Art 112, might however be faced with such questions in the future.
In case of a parallel opposition before the EPO and nullity action before the UPC the question might arise in case of divergent decisions in substance of the UPC and the EPO. Art 125 is inoperant in this case.
The EPO is neither member of the Lugano Convention, and is not submitted to EU Regulation 44-2001 as it is not an EU institution and the EU is not a member state of the EPC.
There is thus no general rule that the EPO has to follow decisions of the UPC or vice-versa.
In its order UPC_CoA_22/2024, commented in this blog, the CoA refused a stay before the UPC in case of a parallel revocation before the UPC and opposition before the EPO.
The CoA made it abundantly clear that, in the interests of harmonisation, it requires the EPO to follow the case law of the UPC. In view of the different time limits in the different procedures, the UPC will always decide first. This has nothing to do with harmonisation, it is simply requesting supremacy of the UPC over EPO.
Converging decisions
If the EPO alone, or both the EPO and the UPC take a final decision of revocation, the question of adopting the judgement of the UPC will not occur as the patent will have disappeared.
Diverging decisions
The question will however arise in case of diverging decisions. If the if the UPC revokes a patent and the EPO rejects an opposition or maintains the patent in amended form, as the patent will not have disappeared. The EPO and the UPC could also maintain the patent in a different form, whereby one could be more limited than the other. What if the EPO maintains a patent in a broader form than that of the UPC?
All those problems have been carefully swept under the carpet by the proponents of the UPC. Reality does however not disappear.
R 8/23
https://www.epo.org/en/boards-of-appeal/decisions/r230008eu1
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