EP 3 618 216 B1 relates to a method, a device and a system for controlling power of a wind farm.
Brief outline of the case
The OD rejected the opposition and the opponent appealed.
The OD did not admit the late ground of opposition under Art 100(b).
The board considered the OD exercised its discretion according to the wrong principles, without taking into account the right principles, or in an unreasonable manner.
The case was remitted to the OD for further prosecution in order to examine the late-filed ground under Art 100(b).
The OD’s decision on the the late-filed objection under Art 100(b)
The OD considered that the feature “limiting power for instruction” was broad, but that the skilled person, seeking to make technical sense of the claim, would nevertheless be able to understand and implement the invention.
It further considered that this feature defined a parameter which was determined on the basis of the subsequent features and then used in the following step. On that basis, the OD saw no need to read a specific technical meaning, such as a setpoint of the wind farm, into the feature.
The proprietor’s point of view
The proprietor argued that the prima facie relevance of the objection had been extensively discussed during the OP before the OD and that the minutes showed that the parties had been heard on this issue.
The proprietor also submitted that the board’s review was limited to whether the correct criterion, namely prima facie relevance, had been applied.
The opponent’s point of view on the remittal
The opponent objected to remittal. It argued that the board’s preliminary opinion on admittance was clear, that both parties were prepared to discuss the substance of the objection under Art 100(b), and that remittal would be contrary to Art 11 RPBA, which provides for remittal only where special reasons present themselves.
The opponent further submitted that remittal would merely delay the proceedings and that the OD’s view on the substance of the objection could already be inferred from the decision under appeal.
The board’s decision on the late-filed objection under Art 100(b)
The board agreed with the OD that the ground under Art 100(b) was late-filed.
For the board, the reasoning of the OD did not sufficiently explain what the “technically meaningful understanding” attributed to the skilled person actually was. Nor does it identify where such an understanding is derivable from in the patent or from CGK.
The mere fact that a claimed element is used as an intermediate parameter in a subsequent method step does not, by itself, explain its technical meaning or how it is to be determined.
The OD also relied on “characteristics of the wind farm, such as the arrangement of the wind turbines”, when interpreting the “pre-acquired theoretical power of the wind farm”.
However, the decision does not explain how such characteristics are to be taken into account when determining this theoretical power. Nor does it explain how a fixed arrangement of wind turbines could account for the different numerical values mentioned in paragraph [0037] of the patent.
Furthermore, the OD did not sufficiently address the opponent’s arguments that the values of 55 kW and 70 kW mentioned in paragraph [0037] were unusually low for a wind farm, that the patent did not define how these values were obtained, and that the distinction between rated or normal power and theoretical power remained unclear. The argument concerning the meaning of “pre-acquired” was likewise not dealt with in the prima facie assessment.
These points were central to the opponent’s objection under Art 100(b). A prima facie assessment need not contain a full examination of the objection on the merits. However, it must show that the essential arguments relied on by the party were taken into account when deciding whether the objection could be relevant to the outcome of the case in order to respect the party’s right to be heard.
The board accepted that the parties were heard during the OP before the OD. However, the minutes cannot replace the reasons for the written decision. Under R 111(2), decisions of the EPO which are open to appeal must be reasoned. The written decision must therefore enable the parties and the board to understand why the discretion was exercised in the way it was.
The board agreed that the OD applied the correct criterion in formal terms. However, the application of that criterion was unreasonable because essential aspects of the opponent’s case were not reflected in the reasoning of the OD’s decision.
The board’s decision on remittal
The board was not persuaded by the opponent’s arguments. The OD has not yet examined the ground under Art 100(b) in substance. Its decision was confined to the admittance of that ground. The present case is therefore not one in which the board would merely repeat a substantive assessment already made by the department of first instance.
Moreover, the defect in the discretionary decision is connected with the OD’s failure to address essential aspects of the appellant’s case when deciding on admittance. In the circumstances of the present case, this constitutes a special reason within the meaning of Article 11 RPBA for remitting the case.
The fact that remittal may lengthen the proceedings does not, in itself, justify denying the parties an examination of the newly admitted ground by two instances. Since the ground under Art 100(b) EPC has not yet been examined in substance, remittal is appropriate.
Comments
The decision is interesting in two ways.
The improper use of the OD’s discretion
The board held that the OD did not used its discretion in a reasonable way. It also reminded that the minutes of an OP before the OD do not replace the required argumentation in the actual decision.
When looking at a lot of decisions set aside due to a SPV, this is very often the problem. The minutes do not tie up with the decision.
IMHO, this is due to the fact that during an OD, its members are not sitting together, and later when drafting the decision and the minutes they members are not in close proximity. The first member writes a decision, the second member independently writes minutes. Whether the minutes are in coherence with the decision, has not been checked by the chair of the OD, who has manifestly signed both without batting an eyelid.
Remittal
The board made clear that remittal might lengthen the proceedings, but should not deprive the parties of a two-step assessment of the substance of a late-filed objection.
It is more or less certain that the file will com back on the board’s desk.
As the decision of the OD on the admissibility of the late-filed objection was not properly reasoned, the board could also have decided that the OD committed a SPV.
In this case, the file would also have been remitted for further prosecution.
By rejecting the opposition, and deciding that the late-filed ground of opposition was not admissible, the OD got read of the file in an easy way. This way was simply too easy.
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