EP 3 212 515 B1 relates to a device, in particular for closing a top portion of a food container consisting of a laminate with a peeled and folded back edge region.
Brief outline of the case
The patent was maintained according AR18.
Both proprietor and the second opponent appealed.
The board decided maintenance according to AR2, and remitted to the OD for adaptation of the description.
The case is interesting in that the proprietor considered that the OD committed a series of SPV.
The board did not agree.
The proprietor’s point of view
The patent proprietor complained that the contested decision was based on three SPV.
First alleged SPV
The proprietor saw a first alleged SPV in a supposed infringement of the requirements of Art 106(1) in conjunction with R 111(2), because the contested decision was based not on facts but solely on the opinions of the OD. However, an opinion cannot provide a legal basis for a decision within the meaning of Art 106(1). It is not within the discretion of the OD to decide, on the basis of an opinion, whether an application meets the requirements of Art 84, 54, 56 and 123(2). Rather, the decision must be based on a comprehensive investigation of the facts.
Second alleged SPV
The proprietor saw a second alleged SPV in a supposed breach of generally accepted principles of procedural law under Art 125; in particular, it claimed that its right to a fair hearing has been infringed.
The proprietor argued that, when discussing the admissibility of documents D37 and D38, the OD had refused to allow the submission of test results showing that a certain feature relevant to AR 2 could not be inferred from those documents.
To this end, it recently submitted documents D49 to D51, each of which contains a written declaration, which each contain a statement that the declarants were present at the OP and could each confirm that the patent proprietor requested the opportunity to support its arguments regarding the disclosure of a feature in documents D37 and D38 by submitting test results.
Third alleged SPV
The proprietor considered that its right to be heard under Art 113(1) has not been respected, in the context of the discussion of the admissibility of documents D37 and D38.
The proprietor further argued that its arguments showing that documents D37 and D38 did not disclose the claimed residual moisture had either not been taken into account by the OD or that the OD had not made it clear in its decision that the proprietor’s arguments to that effect had been taken into account.
The board’s decision
First alleged SPV
For the board, the OD made specific findings of fact with regard to the requests that were not granted in the contested decision, as it clearly substantiated its decision in each case with reference to the teachings of documents D2 and D37 and the documents originally filed.
The fact that the OD then made its own findings of fact on the basis of the evidence presented and subsequently reached a conclusion on the merits of a ground for opposition on the basis of these findings of fact, which it described not as a ‘conclusion’ but as an ‘opinion’, does not constitute a procedural defect.
Regardless of the exclusive meaning that the patent proprietor wishes to attribute to the term ‘opinion’, this approach is precisely in line with the core of the principle of free evaluation of evidence applicable in proceedings before the EPO.
Second alleged SPV
For the board, statements D49 to D51 are not relevant for assessing whether there was a violation of the principle of fair proceedings.
In order for the OD to be able to properly assess and decide on an effective request for the submission of further evidence, it is not only relevant what the proprietor subjectively believes to have requested, but also whether its submission could objectively be understood as a request.
Ultimately, it may not be the wording of the request as a formal request that matters, but rather its substantive content. However, in case of doubt, the risk that the request will be understood as such is borne by the requesting party.
The board was not convinced that, in the OP, the proprietor’s request for an opportunity to prepare a test report for the other parties and the OD was clearly intended as a specific, procedurally relevant request, or that the request allegedly made by the patent proprietor could, when interpreted objectively by the OD, only be understood as such a request.
Neither the minutes of the OD nor the contested decision indicate that the proprietor demanded or even requested to be able to submit test reports regarding the disclosure of documents D37 and D38.
Another argument against the proprietor’s representation is that, although the proprietor requested a correction to the minutes of the OP, and this possible correction specifically concerned the admission of documents D37 and D38, it did not discuss the allegedly significant request for an opportunity to prepare a test report in the context of the admissibility of documents D37 and D38.
The board is therefore not convinced that the possible request for an opportunity to prepare a test report could objectively be seen by the OD as a procedurally relevant request within the meaning of a motion requiring a decision.
Third alleged SPV
Insofar as the proprietor refers to the alleged request, to be given an opportunity to prepare a test report in the context of the discussion of the admissibility of documents D37 and D38, the board referred to its considerations about the alleged second SPV.
The second part of the proprietor’s argumentation was manifestly contradicted by the decision itself.
For the board, the OD clearly addressed the proprietor’s argument concerning the disclosure content of documents D37 and D38, even though it did not go on to reproduce in detail how this argument was formulated.
Comments
Opinion vs. decision during OP
It is very important to carefully listen during OP. If the chairperson announces a decision, the latter cannot be rectified by the OD. Should the first instance division reopen the discussion on the topic, and worse amends its original decision, it invariably commits a SPV. By giving a decision on a given topic, the discussion is closed and the first instance division loses its competence on the topic.
The situation is less critical when the chairperson announces an opinion. The first instance division is then, should necessity arise, allowed to reopen the discussion on a given topic. This is, in my experience, rather rare.
When the final decision is given, e.g. grant or refusal of the application, rejection of the opposition, revocation or maintenance in amended form, then the various opinions given along the OP crystallise into a decision.
It is quite impressive to see how many representatives are not aware of this subtle difference.
Minutes and SPV
The present decision reminds once again, that in the absence of at least a request for correction of the minutes of OP before a first instance division, a SPV is difficult to establish.
Even a request for correction might not be granted by the first instance division.
As the board members are not present during the OP, they can only infer from the minutes and the decision whether a SPV has been committed.
In recent times, most SPV could easily be spotted, as the decision did not tie up with the minutes or vice-versa, and the chairperson signed the decision and the minutes without batting an eyelid.
The board made again clear that what matters is not the subjective feeling of the party claiming a SPV, but what can objectively be derived from the minutes and the decision. It is best to formulate a request clearly and unambiguously, i.e. in a binding form.
Simply presenting the wish to file further submissions or “reserving the right” to file further submissions is not held as filing a biding request.
For instance, “reserving the right” to file further AR is not binding for a first instance division. It will be ignored and no SPV will have been committed.
Comments
Leave a comment