EP 2 656 524 B1 relates to a wireless communication system supporting multiple carriers.
Brief outline of the case
The OD held that claim 1 as granted was lacking N over D2, and eventually decided maintenance according to AR7. The proprietor appealed the decision.
In its communication under Art 15(1) RPBA, the board, inter alia, provisionally endorsed the lack of N over D2, and concluded that the proprietor’s appeal was likely to be dismissed.
A new argument of the proprietor was admitted under Art 13(2) RPBA. The board held that claim 1 as granted was not lacking N over D2 and remitted to the OD for further prosecution.
User Equipment (UE) is any device used directly by an end-user to communicate.
Base station (BS) is the component in wireless communication that connects mobile devices to the network, i.e. any UE.
The proprietor’s point of view
In the proprietor’s view, the scheme of D2 used a different decision criterion which was neither the same nor corresponding to that in the patent.
During the OP before the board, the proprietor submitted, for the first time in appeal proceedings, that D2 could not be relevant to the N assessment of the subject-matter of claim 1 because, in the scheme of D2, the determination of the PUCCH format was done at the UE, whereas granted claim 1 concerned the BS.
The opponent’s point of view
The opponent requested that this fresh argument not be admitted into the appeal proceedings, essentially because it was raised at a very late stage and could, and should, have been submitted earlier, already in the opposition proceedings.
The board’s decision
For the board, the proprietor’s late submission does not introduce any new facts or new evidence. It is simply a new argument concerning the interpretation of prior-art document D2.
However, Art 12(3) RPBA makes clear that arguments also form part of a party’s case, and that a late-filed argument can therefore formally qualify as an “amendment” under Art 13(2) RPBA, the admission of which being at the board’s discretion.
The board noted that some decisions of the boards actually denied that the EPC confers on the boards any discretion to disregard late arguments, since Art 114(2) refers only to facts and evidence.
The board referred to T 1914/12 and the decisions cited in Reasons 7.2.2 therein. The board also noted that in T 1617/23, Reasons 1.6 to 1.9, the competent board concurred with this view but introduced certain reservations.
Even on the assumption that the board had indeed discretion not to admit a late-filed argument, the board considered that there would be no justification to exercise it in the present case.
Once the parties have submitted the relevant claim requests and documents and presented their arguments on them, the board must resolve a number of legal issues falling under its judicial responsibility.
These include the interpretation of the claims, the construction of the relevant prior-art documents and the proper assessment of their disclosure from the perspective of a skilled person in the respective field.
If the board becomes aware, even at a late stage, that its previous interpretation of a prior-art document or a claim from the perspective of the skilled person, or its understanding of a prior-art technical teaching, was wrong, in the present board’s view, it has a duty to correct that error. This applies irrespective of whether the new understanding arises from the board’s own analysis or from a party’s new submission.
In the present case, to disregard the proprietor’s argument and keep its original understanding of the scheme disclosed in D2 would force the board to base its decision on an interpretation which it considers erroneous.
The procedural framework of the appeal proceedings aims to secure efficient and fair proceedings, but also to guarantee that the decisions, based on the facts and evidence adduced, are substantively correct. In other words, a technically correct interpretation of a prior-art document has taken precedence over formal or procedural considerations in the present case.
For this reason, once convinced by the proprietor’s submission, the board adopted it in its assessment of the present case. Hence the case was remitted.
Comments
In T 1617/23, the board held that the possibility of raising new arguments must find its limits where arguments cannot be properly followed or understood and the board finds itself at a loss even to grasp an argument’s prima facie relevance. In such a situation, it would have been incumbent on the proprietor to make submissions in writing prior to the hearing so that both the board and the other party find themselves in a position to properly digest, assess and discuss such argument. All of this was not possible in the case at issue.
On the other hand, T 1914/12, which has been confirmed in a series of subsequent decisions, is not to the liking of certain boards, or better some legal members. This is abundantly clear in T 919/22, commented in the present blog.
When reading the decision, one gets the feeling that the board wanted to avoid giving a blanket approval to T 1914/12 and therewith confirm the latter.
However, it goes without saying that, should a board realise during OP or before, that its interpretation of the prior art is incorrect, it has the duty to rectify its position, whether this is due to the argumentation of a party or not. That the other party has to be heard on the new interpretation of the board goes also without saying. This is independent of T 194/12.
From T 1544/22, commented in the present blog, it can be inferred that T 1914/12 is not dead. A refinement of arguments previously submitted was deemed admissible. The same applies in T 1303/22, also commented in the present blog.
In any case, as the proprietor was the only appellant, the prohibition of the reformatio in peius applied, and the patent could have been maintained according AR7.
Hierarchy of norms
Although T 1914/12 was not taken under the valid RPBA, the present Art 13(2) RPBA poses a question of hierarchy of norms. Art 114(2) makes no reference to arguments, it only refers to facts and evidence.
Can an ancillary norm overturn the clear meaning of an EPC Article? Reasonable doubts are permitted. If the
This question was already raised in reference to T 1242/21, commented in the present blog.
If the EPC takes precedence over the Implementing Regulations, cf. Art 164(2), how can it be that the RPBA takes precedence over a clear rule set in the EPC, here Art 114(2).
Comments
Leave a comment