EP 3 461 634 B1 relates to a multilayer cling film.
Brief outline of the case
The patent was revoked and the proprietor appealed.
The board confirmed the revocation.
The case is interesting as it deals with OP held by ViCo before an OD.
The proprietor requested that OP before the OD be held in-person. Moreover, it requested that an appealable decision on that request be delivered so that a separate appeal pursuant to Art 106(2) against a decision refusing that request could be filed.
Both requests were refused by the OD, referring to Art 1(2) of the Decision of the President of the EPO of 22.11.2022, cf. OJ EPO 2022, A103.
OP before the OD were thus conducted as a ViCo.
The proprietor’s point of view
Establishing OP by ViCo, based on Art 1(1) of the Decision of the President of the EPO of 22.11.2022, without the consent of the parties went beyond the President’s power established in Article 10(2)(a) EPC.
In view of this consideration, the proprietor essentially questioned whether the conduct of OP in the form of a ViCo was compatible with the right to be heard under Art 113(1) and the right to OP under Art 116(1) if not all the parties to the proceedings have given their consent to the conduct of OP in the form of a ViCo.
Applying the reasoning underlying the EBA in G 1/21, it appeared that the conduct of OP before departments of first instance in the form of a ViCo was not compatible with the EPC unless all parties had given their consent. Thus holding OP by ViCo without the consent of the parties was considered a SPV.
The provision under Art 1(2) of the President’s Decision of 22.11.2022, according to which a refusal to hold OP on the premises of the EPO was not separately appealable, interfered with and pre-empted the department’s discretionary decision. This went beyond the President’s power established in Art 10(2)(a) EPC.
The proprietor stated that the aim of its objections was to obtain clarification from the board regarding compatibility with the EPC of the standards laid down and practised by the EPO for the format of first-instance OP.
The board’s decision
The board made clear during OP that the task of the boards of appeal is not to engage in general legal considerations on issues raised, but to decide on specific requests in appeal proceedings.
In other words, the appeal proceedings are not, in principle, a forum for general considerations, e.g. on the compliance with the EPC of the practice of the departments of first instance regarding the format of OP, as sought by the proprietor.
Such considerations should only be made if they are related to a specific request in the appeal proceedings. However, the appellant did not submit such a request. The board therefore did not see the need to give any general considerations on the practice of the EPO regarding the format of first-instance OP.
Lastly, the board noted that the proprietor itself, when asked by the chairman of the board during the OP, acknowledged that its right to be heard had not in fact been infringed by the OP in the first instance being conducted by ViCo.
Comments
By acknowledging that its right to be heard had not been violated when the OP before the OD was held in form of the ViCo, the proprietor severely undermined its position.
The proprietor had nevertheless a point, which should have been clarified by the board.
It can be added that, since the present board chickened out of the question raised, it has not been up to his duties.
Are board members so frightened not to be reappointed when they deal with uneasy, but legitimate questions of parties?
When OP could be held in Munich and/or The Hague/Berlin, some parties requested to have OP held at a specific location. In T 1012/03, see Catchword, the board took clearly position and considered that a party did not have the right to have OP at the location of his choice.
In T 2320/16, Reasons 1, the board took position, and considered that OP by ViCo were possible, even before G 2/21.
In T 2610/22, Reasons 2.5.3, the question of the form of OP before an OD was also raised. In T 2610/22, commented on the present blog, the board did not chicken out, and considered that an OP by ViCo did not hinder the opponent to present all attacks of IS it could consider convincing.
Whether chickening out or dodging the question of OP by ViCo before a deciding body of the EPO or not, G 1/21 remains a problem, whatever the present board might not have said.
OP by ViCo have no legal basis in the EPC and its Implementing Regulations. OP by ViCo, are the result of a decision of the president of the EPO under Art 10(2,a) for first instance divisions, and under Art 15a(1) RPBA before the boards.
Limiting the order in G 1/21 to OP before the boards is neither abiding to the letter nor to the spirit of the EPC when looking at Art 31 or 32 VCLT.
Neither Art 116 nor R 115+116 make a difference between OP before first instance divisions and boards of appeal.
It is difficult to consider that, according G 1/21, the “gold-standard” of OP, i.e. in-person OP, is only valid before the boards of appeal, but not before first instance divisions.
G 1/21 is clearly a political decision. Whilst it can be accepted that during the pandemic OP by ViCo have helped not to stall procedures, in the absence of a pandemic, there is no reason that the parties should not be given the choice of the format of OP, be it in first instance or in appeal.
What is certainly not acceptable is that when holding OP by ViCo, the members of the deciding body can be scattered around and sit in any member state of the EPC.
I do not know any procedure, where the members of a deciding body do not sit together when deciding upon the fate of a request or an application.
In T 0423/22, commented on the present blog, it has even be considered that witnesses can be heard by ViCo. This is ludicrous, as there is no guarantee that a witness has not been following the OP as member of the public or sitting next to a member of the public, before being heard as a witness.
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