EP 3 575 486 B1 relates to an ironing device provided with a steam control unit.
Brief outline of the case
The patent was maintained by the OD according to a new MR. The opponent appealed.
The board decided that claim 1 as maintained lacked IS over D2=WO 01/55496, characterised as X,Y,A in the ESR.
As an AR was not admitted under Art 13(2) RPBA, the patent was revoked.
The case is interesting in that the board decided that OP would be held in-person in spite of the proprietor’s repeated request to hold it by ViCo.
The proprietor’s point of view
The oral proceedings were requested to be held by ViCo for reasons of procedural economy. Even though the provisions of the EPO communiqué published in the OJ EPO 2022, A106, did not apply to OP before the boards of appeal, in the present case there were no serious reasons, within the meaning of that communiqué, that would prevent the OP from being held by Vico.
The proprietor argued that holding OP in-person would indeed be contrary to procedural economy, particularly with regard to the costs and time involved in traveling, which actually prevents a second representative of the proprietor’s company from attending.
The board’s decision
Exercising its discretion under Art 15a(1) RPCR, the board decided not to grant the proprietor’s request to hold OP by ViCo, because it did not consider it appropriate. The board referred to T 2432/19, Reasons 1.13 and 1.14.
In line with its previous experience in similar cases, in the present case, the board first assessed the complexity of the issues to be addressed with regard to the technical effects of features A and B, concluding, for example, that the use of a whiteboard/flipchart might be necessary.
Consideration of the technical effect of feature A might require examination of various graphic illustrations of the series of water flow rates, while feature B involved consideration of various geometric configurations in space.
The possibility of having to resort to other graphic illustrations in this regard was supported by the respective submissions of the parties, which reproduced various figures.
For reasons similar to those set out in point 1.15 of the grounds for decision T 2432/19, the board considered that the other means of communication available during a ViCo for presenting graphic information were not equivalent to the possibilities offered by a physical whiteboard and could have increased the complexity of the proceedings, particularly in view of the required presence of interpreters.
The proprietor was duly represented by an authorised representative at the OP in person while maintaining its request for a ViCo.
The absence of grounds considered serious according to the indications in point 4 of the EPO OJ 2022, A106, which do not apply to OP before the BA, as also acknowledged by the respondent, was taken into consideration by the board.
However, the board did not arrive at a different assessment of the complexity of the issues to be raised and the unsuitability of this case for oral proceedings held by ViCo.
Comments
Tears come to my eyes when the proprietor claims that, due to the holding of OP by ViCo, a second representative could not attend to the OP. It should not be forgotten that the proprietor is one of the biggest producers of kitchen and domestic appliances.
The advantages of an in-person OP
On the other hand, leaving in the room drawings/formula on a whiteboard or on various flipchart pages while deliberating, can help the decision finding of a deciding body. I base this on my own experience. It does not mean that new information is brought in the procedure, but the important topics can be better ascertained. No screen will replace a whiteboard or a flipchart.
All members of a deciding body should sit together during OP
Whatever might be said by the EPO and the boards, holding OP by ViCo when all the members of a deciding body are not sitting together is not respecting the right to be heard. Reasonable doubts are permitted that the requirements of Art 6(1) ECHR are fulfilled.
That in exceptional circumstances like a pandemic, exceptions can be tolerated is not at stake. It should however not become a standard practice in a normal situation. During an OP all members of the deciding body must sit together.
Hearing witnesses by ViCo is an heresy by itself. There is no guarantee that the witness is not listening in the debate or what other witness say before being heard itself. If a witness is heard by ViCo it should be located in room in which it can be guaranteed that he cannot be submitted to any possible interference or suggestion. Sitting on the premises of a party is laughable and gives no guarantee whatsoever. See T 2250/21 and the comments in the present blog.
The shortcomings of G 1/21
That G 1/21 has been limited to the boards is a scandal in itself. In Art 116 and R 115 and 116, the EPC makes no difference between first instance and boards of appeal. It was a political decision of the EBA to please the higher management of the EPO.
Gold standard in matters of ViCo
Following T 2432 /19, T 274/20, the present decision is a further blow to T 608/21, in which the board claimed that, due to the technical developments that have occurred in the meantime and the greater experience of all parties involved, OP by ViCo can be regarded as an almost equivalent alternative to a in-person OP. The present decision is the proof of the contrary.
In G 1/21, Reasons 45, the EBA considered that in-person OP should be considered the “gold-standard” in matters of OP. When one sees the number of OP before the boards, where the boards decide ex-officio that OP will be held by ViCo, the gold standard is rather trampled upon.
If both parties agree to OP by ViCo, there is nothing to say about this, but it is not to a board to decide, for its own convenience, that OP will be held by ViCo, and in this case the board must sit together.
Holding OP by ViCo is indeed very convenient for the boards, as they do not have to sit together. It is nevertheless problematic, be it for the boards or first instance divisions, when a deciding body is not sitting together. In T 608/21, the board even claimed that his decision was in conformity with Art 6(1) ECHR. More than reasonable doubts are however permitted.
In T 608/21, the board refused to refer a question to the EBA on OP by ViCo. However such a referral would be welcome, or at least, in view of G 1/21 an amendment of Art 15a(1) RPBA ought to be carried out.
In this respect the EPO should apply Art 125 and enquire what is the practice in the contracting states in matters of hearings before a deciding body.
T 2432/19 was commented in the present blog. T 274/20 confirming T 2432/19 was commented in the present blog as well as T 608/21, also commented in the present blog.
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