EP 2 715 892 B1 relates to a gas insulated switchgear having a fluorine compound.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board held that claim 1 as granted as well as claim 1 of AR2-9 were insufficiently disclosed. AR2 was lacking IS over a document quoted in the ISR established by the EPO and AR 10-12 were not taking into account under Art 13(2) RPBA. The patent was thus revoked.
A request for the reimbursement of the appeal fee by the opponent was rejected.
In this post we will concentrate on the non- reimbursement of the appeal fee around the admissibility of a late filed document A33.
The opponent’s point of view on the alleged procedural violation
The OD announced first, cf. point 5.10 of the minutes, that it was admitting document A33, but according to point 5.13 of the minutes, it went back on this decision and did not admit document A33.
The opponent considered this to be a substantial procedural violation, since, in its view, the OD did not have the power to go back on a decision once it had been made, citing decision G 12/91.
The board’s decision on the alleged procedural violation
For the board according to reason 2 of G 12/91, only decisions taken after the closure of the debates and rendered during OP which, following their pronouncement, enter into force and can no longer be modified by the same body which rendered them.
This is not the case for “interim decisions”, which in reality are pure conclusions, taken before the closure of the proceedings, and not decisions within the meaning of Art 106(2). The board referred here to R 5/19, Reasons I, 2.2,.
Contrary to the opponent’s point of view, decision G 12/91 recognizes in reason 3, that after the closure of the OP, new arguments put forward by the parties can no longer be taken into consideration unless the decision-making body decides to reopen the OP for further discussion of the merits.
If a body has the power to reopen OP after the closure of the debate, it follows that it can reverse an interim decision taken before the closeure of the debate.
Moreover, the legal position adopted by the opponent is contrary to R 106. It would make no sense to oblige a party to raise an objection against an alleged procedural defect during the appeal proceedings, assuming this were possible, if a board did not have the power to go back on an interim decision taken in order to remedy, where appropriate, a substantial defect.
Decision T 683/14 at point II, part “D”, supports this position. There is no difference in this respect between an OD and a BA.
For the board, the OD did not commit a SPV by changing its mind about A 33.
Comments
The decision is anything but convincing
It has first to be observed that G 12/91 actually deals with written proceedings. According to G 12/91, the decision-making process following written proceedings is completed on the date the decision to be notified is handed over to the EPO postal service by the decision-taking department’s formalities section.
Even if G 12/91 considers the difference between the decision making during OP and written proceedings, G 12/91 is not about the end of the procedure during OP.
When it comes to R 106, it has to be observed that this legal provision exclusively applies to OP before the boards. It does not apply to divisions of first instance. It follows that any conclusion of the board based on R 106 are irrelevant in procedures before a first instance division.
The same applies to the refence to R 5/19 as the procedure leading to the end of an OP is different in appeal and in first instance, see below.
The reference to T 683/14 is as well irrelevant as it relates to the refusal of the reimbursement of the appeal fee after interlocutory revision pursuant to Art 109. It is only incidentally that the board noted that OP were not terminated by a formal decision. The procedure was continued in writing and ED had not committed a SPV as the latter had indicated that the debate may be re-opened.
Closure of an OP before a board and before a first instance division are different
There is a difference between the closure of OP before a board and before a division of first instance.
According to Art 15(5) RPBA, the closure of an OP before a board occurs in two steps.
In a first step, when a case is ready for decision during OP, the chair states the final requests of the parties and declares the debate closed. No submissions may be made by the parties after the closure of the debate unless the board decides to re-open the debate.
It is only in a second step, after the closure of the debate that the chair then closes the OP before a board.
Before a first instance division, the OP ought to be closed when all requests on file have been discussed, either on their admissibility or on their substance. From this moment, the chair of a first instance division has the obligation to close the OP.
It is left to the discretion of the OD to announce opinions or “intermediate” decisions when progressing through OP. Lots of ODs or EDs are not aware of this subtle difference.
Difference between a decision and an opinion given by an OD during OP
According to T 537/05, Reasons 1.5 ff., there is a difference between the fact that an OD gives, during OP, an opinion or a decision about a given topic.
If an opinion is given there is no problem when continuing the OP, of re-opening the discussion and allowing the proprietor to file further requests.
If a decision is given about the sole request valid at this moment, then the only possibility is to revoke the patent if the request is not allowable in substance. All actions carried out afterwards by the OD are then ultra vires and without legal effect.
For the board, a substantial procedural violation occurred in that the patent was maintained on the basis of a later filed AR.
In T 361/08, Reasons 8, it was held that, had the OD taken a decision on the MR being the claims as granted, the proprietor would have been barred from withdrawing the MR later. In T 361/08, the board considered that it could not reasonably be understood from the minutes and the circumstances of the case, that the OD had taken an oral decision on the MR which was then on file.
Conclusion for the present case
According to point 4.11 of the minutes, the OD gave an opinion about sufficiency of disclosure. According to point 5.6 of the minutes, the OD gave an opinion about the N of claim 1 as granted.
According to point 5.10 of the minutes, the chairman announced that A33, a late filed document was admitted in the procedure. According to point 5.13 of the minutes, the OD reversed its decision to admit A33.
In view of the circumstances, it is more likely than not that a decision was taken on the admissibility of A33.
If a document is admitted in the procedure, this means that the opponent is allowed to present objections based on the late filed document and the proprietor is allowed to file at least one AR attempting to overcome the objections raised on the basis of the late filed, but admitted document.
Admitting a late filed document can thus not be considered as a mere “intermediary decision/conclusion” or as an opinion. The OD has thus in all appearance committed a SPV contrary to what the present board asserts.
It is clear that deciding for a SPV would have forced the board to remit. That board found that the patent had no reason d’être in view of the massive problems of sufficiency, does however not excuse the board from actually disregarding the SPV committed by the OD.
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