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T 1206/19 – Revision of the discretion of an OD in matters of late filed documents by a BA – Diverging case law

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Brief outline of the case

The proprietor and the opponent appealed the OD’s decision to maintain the patent in amended form according to AR3 filed during the OP before the OD.

The opposed patent relates to a hearing system.

The appellant/opponent requested that the decision under appeal be set aside and that the patent be revoked.

The appellant/patentee requested that the decision under appeal be set aside and as MR that the patent be maintained as granted, as AR1 that the appellant/opponent’s appeal be dismissed or as that the patent be maintained on the basis of one of AR 2 to 10.

At the end of the OP the board decided to maintain the patent according to AR4.

The MR, claim 1 as granted, was considered lacking IS over the combination of D1=CPA=US 2012/0020505 + D17=US 6 349 278. Both documents were not mentioned in the ESR.

Late filed document admitted by the OD

Prior-art document D17 had been filed by the in response to the proprietor’s reply to the notice of opposition and an annex to the summons to OP.

The proprietor argued that D17 should not have been admitted into the proceedings, since D17 provided similar information as document D15 filed by the proprietor and that D17 was not prima facie relevant as it was not directed to a hearing aid.

The board held that there were indeed good reasons to file document D17 after the opposition division did not share the opponent’s line of arguments. As to the similarity to D15, it is noted that the title of D15 refers to a posteriori speech presence probability estimation whereas D17 has no such limitation.

The board also agreed with the findings in point 2.3 of the appealed decision and concluded that the opposition division had exercised its discretion to admit D17 into the proceedings without having committed any procedural violation, let alone a substantial one.

Thus, the board could not see any reason to “unadmit” a document which had already been admitted by the first-instance department without the latter having committed any substantial procedural violation in that regard, which would normally lead to a direct remittal of the case.

At any rate, the board considered that, as held in T 39/93 (cf. Reasons 3.1.1, second paragraph), no valid judgment on the merits of the first-instance’s decision could be made if evidence that was admitted by the first-instance department would simply be “unadmitted” by a board.

T 960/15

The board did not follow the conclusions drawn e.g. in T 960/15, published on 22.12.2021, cf. Reasons 3, applying the test proposed in an obiter dictum of G 7/93, Reasons 2.6, relating to the exercise of discretion under R 86(3) EPC 1973 = R 137(3).

In the last sentence of Reasons 2.6 of G 7/93, the EBA noted that “a Board of Appeal should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles [as set out in paragraph 2.5 above], or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion”.

In T 960/15, the proprietor challenged the decision to admit a late filed document in the proceedings it into the proceedings and the Board interpreted this as a request that the OD’s discretionary decision to admit D8 be set aside.

The board recognised in T 960/15 that there was a long-established jurisprudence setting out the Boards’ powers to review discretionary decisions, and the limits on those powers that reflect the decisions’ discretionary nature

In T 960/15 the board held that since the proprietor was adversely affected by the admission of D8, which document was later found to anticipate the first auxiliary request, the proprietor was within its rights to direct its case to that aspect, or part, of the appealed decision.

The Board held itself competent to review the Opposition Division’s decision to admit D8, and such a review belonged to the primary object of these appeal proceedings according to Art 12(2) RPBA20.

Eventually the board confirmed the OD’s decision to admit the late filed document.

The considerations brought forward by the board could however also mean that the board could have “unadmitted” the late filed document.

Comments

We have here again procedural differences between boards.

While in the present decision the board considered that a document admitted by an OD cannot be “unadmitted”, unless the OD committed a substantial procedural violation, the board of T 960/15 considers this possible and part of its judicial review of the OD’s decision under Art 12(2) RPBA20.

I would rather think that once a document has been admitted by the OD, and if it was a determining part of the decision of the OD it cannot be simply “unadmitted”.

T 104/17

A good example is given in T 104/17 published on 15.06.2021, i.e. before T 960/15.

The proprietor whose patent had been revoked contested in appeal the admissibility of the late filed documents D12-D15 by the OD.

It was not immediately apparent to the board on what legal basis a retroactive non-admission of individual documents admitted in the opposition proceedings and underlying the contested decision could take place in the appeal proceedings.

Pursuant to Art 12(1,a) RPBA20, such documents, as part of the contested decision, are in principle also part of the appeal proceedings.

For the board, retroactive non-admission also does not appear to be derivable from Art 114(2). If the OD has admitted a document which may have been filed late and thus also taken it into account in the decision, this fact cannot be removed from the proceedings or otherwise erased without annulling the entire decision and remitting it for a new decision.

Furthermore, the board did not see that the Opposition Division’s admission of D12-D15 was clearly erroneous and also referred to the established line of case law according to which a board should only overrule the admissibility decision of an OD if the discretion was not correctly applied, cf. Case law of the BA, 9th edition 2019, IV.C.4.5.2. It is also interesting to note that in T 104/17, the board also referred to G 7/93.

General conclusion

I would go as far as to claim that, when a board considers the discretion of an OD has not been correctly exercised, but the late filed documents where part of the decision, the ill-admitted documents cannot be “unadmitted” but the whole decision has to be set aside and the file remitted to the first instance for further prosecution without the ill-admitted documents.

I do not see a separate right for a board to decide on the admissibility of late filed documents as done in T 960/15. T 104/17 with T 1206/19 seem to be the relevant decisions. Both decisions mentioned here were taken under the RPBA20.

As there is a decision, T 960, also taken under the RPBA20 which considers that a board has a separate right to decide on the admissibility of a document, the situation should be clarified by a decision of the EBA.

Diverging case law in many aspects

Beside deletion of claims, combination of claims, holding or not of OP in the present situation, we have now a further topic, admissibility of late filed documents, which is handled differently by different boards, all under the RPBA20.

That the RPBA20 had the aim to reduce the backlog of the BA is one aspect. That the RPBA20 would lead to procedurally so diverging decisions was not to be expected and is not good for the reputation of the boards as a whole.

It would be good to clarify the situation on all those topics for the benefit of the users of the EP system.

https://www.epo.org/law-practice/case-law-appeals/recent/t191206eu1.html

Comments

4 replies on “T 1206/19 – Revision of the discretion of an OD in matters of late filed documents by a BA – Diverging case law”

What a coincidence. Today there is a story in the UK press about the police deciding to “de-arrest” a person. What does that mean? Whoever heard that word before?

As I understand it, the term “de-arrest” is necessary, in order to distinguish from the case where a person is, after arrest, released without charge. The “released” person is burdened by a record on police files but there is no such “police record” for a “de-arrested” person.

Perhaps the police needed the “de-arrest” terminology to defuse the widespread ridicule they suffered, when arresting a person at the funeral of Queen Elizabeth II just because he shouted out (as Charles III) rode past “Who elected him?” Whether I have in the UK a “police record” or not is something I care about, very much.

Whether or not the OD exercised its discretion correctly, in admitting D17, strikes me as interesting but not so problematic as whether a person ends up with a “police record”. If the OD has declined to admit D17, the TBA could correct the error. If the TBA thinks that the OD was wrong to admit it, the TBA is free to say so, and then issue a Decision to remit the case to the OD with an order to write a decision free from reference to D17.

I like the flexibility the TBA’ s have, to decide cases justly, on their individual and peculiar facts. Formulaic Rules are all very well for legal certainty, but I think justice trumps legal certainty. Unless there is a clear need for an immediate referral to the EBA, let the Boards go on issuing decisions founded on the special facts of the case, until a sensible Rule on discretion to admit emerges by Darwinian evolution.

Incidentally, does an arrested and detained person, upon “de-arrest”, become tained (instead of detained)?

DXThomassays:

Dear Max Drei,

I like the comparison with being arrested and de-arrested. I do think that nobody wants a police record be in the UK or elsewhere.

The aim of my post was to say that if a document was admitted but the discretion not exercised properly and at the same time the document is an integral part of the decision, this fact cannot be un-done or un-admitted. It is part of the decision under Art 12(1,a) RPBA20 which has to be reviewed in a judicial manner according to Art 12(2) RPBA.

I was just pleading for the fact that there should be no separate decision of un-admitting a document which has been wrongly admitted by the OD, cf. T 960/15. T 1206/19 took a different stance on this point.

The only way to deal with such a situation is to set aside the whole decision as the wrong admissibility is part of the appealed decision. I agree with you, and I have suggested that in the remittal the board should make clear that the further prosecution should be without the wrongly admitted document.

T 1206/19, T 960/15 and T 104/17 were all taken under the RPBA20 and if I can agree with you that if the boards have a great flexibility, it ends up often with contradictory decisions which makes the situation confused and less predictable. From all those decisions, my preference goes to T 104/17.

Legal certainty is something which might be difficult to achieve but legal coherence should be an achievable aim. It should be expected that similar situations are dealt with in a similar way. No more but no less. But this is not what is possible to see when looking at recent decisions of the boards in various matters. In certain procedural matters the case law is rather divergent than convergent.

And on top of it the problem of hierarchy of norms has to be clarified. The main question being that whether the RPBA20 can make some decisions of the boards and of the EBA obsolete or not. I do not have a reply to this difficult question, but I am inclined to say no. Clearing the backlog of the boards should not be the occasion to render moot some decisions of the EBA and of the T or J boards.

Thank you, Daniel. There we have it. You comment under your real name so everything you say has to be carefully thought through, if your reputation is to survive undamaged. It all takes much time. Conversely, I comment under a pseudonym so can be playful and self-indulgent in my far less time-consuming off-the-cuff comments.

Of course, I like it best when my comments both entertain and provoke a thoughtful and valuable response. Thank you for giving me so much of your precious time.

In England, it is rare for a court of appeal to decide that the lower court abused its discretion. It strikes me that the option to remit should be available to a Board, but only applied in the most egregious circumstances. Otherwise, a Board should be slow to condemn a Division for abusing its power of discretion. Apart from any other considerations, it’s a matter of respect owed by a higher court to the efforts of the judges in the lower court. One would hope that at the EPO, a climate of rising respect should cover the relationships between the Divisions and the Boards. A diminution of mutual respect is a very unwelcome prospect, seriously damaging to the reputation of the EPO.

DXThomassays:

Dear Max Drei,

Thanks for your enlightening comment.

I can agree with you that I have to be careful what to say as I put my name under it.
A reputation is very quickly ruined while it takes a long time to build up.
I do not claim that I have the truth and I can also be on the wrong track.
It is then up to me to admit my mistake.

I can agree with you that a diminution of mutual respect between the boards and first instance divisions would be a very unwelcome prospect, seriously damaging to the reputation of the EPO. On the other hand, first instance divisions cannot be aware of all T or J decisions. Only those mentioned in the Guidelines are binding. This is not showing a lack of respect towards the boards, but exercising their duties in the framework of the Guidelines.

It is for a party to show that a given T or J decision not mentioned in the Guidelines is applicable by analogy and should be applied in their present case.
A first instance division has the discretion to agree or not.
Again this is not showing a lack of respect, but a first instance division cannot act against a policy decided by the upper management.
Some decisions not quoted in the Guidelines will have to be ignored, but the reasons for it should be based on the substance of the case.
Otherwise the right to be heard will not have been respected.

The case law of the boards is clear in matters of discretion. A board should only overrule a discretionary decision if the discretion has been applied according the wrong principles or in an unreasonable way.
This is why board’s decisions overruling discretionary decisions are rare.
In general it is when at the same time a substantial procedural violation occurred.

I will soon publish a post about a decision in which the board considered that the OD correctly applied its discretion in admitting a late document, but nevertheless committed a substantial procedural violation.

As far as remittal is concerned, I would like to draw your attention that the original version of Art 11 RPBA20 remittal should have been quasi limited to the case of substantial procedural violation.

The boards reacted and remittal is also possible for “special reasons”, one special reason being a substantial procedural violation.

When looking at case law in matters of remittal the practice under the RPBA20 has not changed much from that under the RPBA07.
If the refusal or revocation was for a problem of Art 83, 84, 123(2) or 54 and the boards find the decision in substance incorrect, the board will remit in order for the remaining patentability conditions to be admitted.

If the boards would not remit and should systematically deal with the remaining patentability criteria, the backlog would not be resorbed at all, which would be contradictory to the aim of the RPBA20.
In general the board decide through when the patent is near the end of its lifetime.
Otherwise remittal is standard.
Some ping-pong is thus unavoidable, but it should be very limited.

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