EP 2 905 794 B1 relates to a static contact support for a small circuit breaker.
Brief outline of the procedure
The OD held that claim 1 as granted lacked of N of over a PPU submitted by the opponent. The same applied to ARI+III-VI+VIII. ARII was not admitted under R 80 and ARVII suffered a problem of clarity. The patent was thus revoked.
To ascertain the PPU, witnesses were heard by ViCo before the OD.
The proprietor appealed.
In appeal the proprietor requested OP in person and hearing of the witnesses in person. The board refused those requests.
As the board found that the subject-matter of ARVIII was novel over the PPU, the board remitted the case for further prosecution.
The topic of the present blog will be the hearing of witnesses by ViCo.
The proprietor’s point of view
The proprietor submitted that it had never given its consent to the OP being held and the witness being heard by ViCo. Both should be done in person and the OD should have granted these requests.
The proprietor considered that G 1/21 should have applied.
Hearing witnesses was similar to holding OP. Thus, the findings of G 1/21 should apply here too, and a fortiori because hearing witnesses entailed some additional requirements, for example ensuring that witnesses are not influenced by other people while giving their evidence, which was easier to control in person than by ViCo.
The proprietor added that the extract of a catalogue for motor protective circuit breakers subject of the PPU was highly relevant for the decision. However, since the OP were held by ViCo, neither the proprietor nor the OD had the opportunity to inspect an original catalogue. Hence, in view of the high standard of proof “beyond reasonable doubt”, the catalogue should not have been taken into consideration.
Furthermore, the witness was an employee of the respondent and was therefore completely dependent on the opponent and had been actively involved in the preparation of the opposition.
The proprietor also requested the board to refer two questions to the EBA, on the application of G 1/21 in cas of hearing witnesses.
The opponent’s point of view
The possible reasons for refusing a request for oral proceedings to be held in person, as listed under point 49 of G 1/21, included measures for containing the pandemic situation, for instance travel restrictions. The OD had good reasons for refusing the proprietor’s request for in-person OP.
The proprietor should have requested that the OP be held and the witness be heard in person much earlier than at the beginning of the OP before the OD.
The issues as regards inspecting the PPU and ensuring that the opponent could not influence the witness while he was giving his evidence should have been raised much earlier. However, the proprietor did not react to the summons for the witness to attend a hearing by ViCo for about nine months.
The board’s decision
Application of G 1/21 and OP by ViCo
The board agreed that G 1/21 does make some general statements that can be taken to apply to proceedings before ED and OD as well as to appeal proceedings.
The board held that it is true, that under the Bavarian regulations in force on the date of the OP, meetings of the size of OP with the hearing of a witness could have been held in person. However, this does not mean that the pandemic situation was generally considered to be over.
In any case the EPO had to consider regulations on a larger geographical scale than Bavaria, in particular with respect to travel restrictions.
The circumstances listed in G 1/21 that could justify not holding OP in person persisted on the date of the OP in question.
Hearing of the witness by ViCo
R 117, in force when the summons to OP and the order to take evidence by hearing the witness were sent out, explicitly refers to the possibility of hearing a witness by ViCo.
While the amending of R 117 may have been occasioned by a particular situation (in this case the pandemic), the wording of Rule 117 does not limit its application to a pandemic or similar exceptional situation. It thus applies irrespective of whether the situation which occasioned its amendment persists or not.
An exception when it comes to taking of evidence, is when the evidence concerns the haptic feel, texture, handling experience or any other feature that cannot be properly transmitted by ViCo. The board did not see how these aspects would be relevant in the case of a catalogue.
The board refused the request for a referral to the EBA, as it was not aware of any statement in G 1/21 that would be even indirectly – let alone directly – applicable to hearing a witness.
In summary, the board saw no reason why hearing witnesses by ViCo would be unsuitable or incompatible with the EPC.
Comments
That an employee of an opponent can be heard as a witness, does not, a priori, disqualify his testimony, cf. T 1337/04 or T 1060/06. On this point the proprietor could not succeed. The free appreciation of evidence applies. But what about a free evaluation about fabricated evidence allegedly supported by a witness statement.
In this aspect and contrary to what the board alleges, hearing witnesses by ViCo is problematic as it cannot be assured that the witness is not listening into the OP. The proprietor has a point when he queries the hearing of witnesses by ViCo and when it is about a catalogue.
As far as catalogues I concerned, I experienced the fact that the catalogue provided by the opponent during the written disclosure was actually totally different when the proprietor and the OD had it in hand. It actually consisted of loose leaves simply assembled in a box. This could only be seen when the catalogue was presented to the OD.
It is now the second time that a board refuses to refer questions to the EBA relating to the hearing of witnesses by ViCo, cf. T 2250/21, commented on the present blog.
Hearing witnesses by ViCo should, as a rule, be carried during an OP in person. The board gave very formalistic reasons based on R 117 to dismiss the hearing by ViCo, completely ignoring the reality.
Thinking of Art 125, it would be interesting to see whether, in the EPC contracting states, witnesses can be heard by ViCo and under which conditions.
It cannot be expected that the president of the EPO will ever refer a question to the EBA on thi topic.
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