The patent relates to means for preventing tools from being pulled out from tool holders with a tool holding fixture.
Brief outline of the case
Both opponents appealed the decision of maintenance according to AR 8a.
The board confirmed the maintenance according to AR 8a.
The OP before the OD took the form of a ViCo. The OP before the BA was first scheduled as ViCo and later changed as in-person OP.
The case is interesting in that Opponent 1 argued that the OD committed a SPV by holding the OP in the form of a ViCo without its consent.
Opponent’s 1 point of view
Opponent 1 criticized the fact that the OP before the OD were held by ViCo, as this had prevented it from supporting the interpretation of the disclosure of document D2 with the aid of a model during the debate on IS.
Opponent 1 explained that he had not elaborated on D2 during the OP because the OD had prevented the announced presentation of the model due to the conduct of the OP by ViCo. If he had been able to present the model, the OD’s assessment of the existence of an IS could have been different.
Opponent 1 emphasized that, according to G1/21, there must be “good reasons” on the basis of which, despite a corresponding request by a party, the OP cannot be held in person. No such good reason could be found in the contested decision.
Opponent 1 pointed out that the Minister of Health of the Federal Republic of Germany had already declared the pandemic emergency for COVID-19 diseases in the Federal Republic to be over at the end of November 2021. The OP held in January 2022 could therefore also have taken place in person.
The board’s decision
According to the minutes of the OP before OD, in response to questions from the chairman the parties confirmed, thus also Opponent 1, at the end of the OP that the latter had gone well technically.
A violation of the right to be heard could therefore only have arisen from the fact that the format chosen for the requested presentation of a model for the interpretation of the D2 was not suitable and the opponent was significantly impaired in his right to make submissions as a result.
The board noted that the demonstration of the model should have exclusively and generally concerned the feature “press fit” in connection with the disclosure of D2.
Further details regarding what exactly was to be demonstrated and why the demonstration of the model was so important for the submission were not and are not available.
In particular, there is a lack of explanation as to what could have been shown with the model beyond the content of D2 and why a manufactured model could not also be shown in the context of a ViCo, whether in real time in front of the camera or by sharing a video made of it or images of the model from different angles.
Against this background, it is not apparent why the assessment of the OD should have been different in the case of in-person OP.
The fact that opponent 1 decided not to refer to D2 at all during the discussion of the IS was ultimately at his discretion and had nothing to do with a violation of the right to be heard.
In view of the possible presentation variants described above, an in-person OP was certainly not the only way to present certain features of the model in connection with D2.
The board was of the opinion that the OD exercised its discretion appropriately in deciding not to grant the request for in-person OP and that no violation of the opponent’s right to be heard had occurred.
The reference to G 1/21 is all the more unconvincing because G1/21 relates exclusively to the proceedings before the boards of appeal and cannot be applied directly to the proceedings at first instance.
Comments
By declaring at the end of the OP by ViCo before the OD, that the latter had gone well technically, Opponent 1 deprived himself of a strong argument that the OP in the form of ViCo violated his right to be heard.
During the discussion on IS for AR8a, Opponent 1 requested postponement of the OP and continuation as in-person OP in order to use D2 with the aid of a model. It is not apparent that Opponent 1 has even attempted to show the model as suggested by the board in the present decision.
It was thus easy for the board to decide that it would have been possible for Opponent 1 to nevertheless show the model. It was Opponent 1 himself who decided not to show the model in front of the camera or by sharing a video made of it or images of the model from different angles.
Application of G 1/21 for OP before first instance divisions
It is certainly correct for the board to state that G 1/21 relates primarily to OP before the boards and cannot be applied directly to OP before first instance divisions.
On the other hand, Art 116 does not make a difference between OP before first instance divisions and before the boards of appeal. The same applies to R 115 and R 116. The reason why G 1/21 cannot be applied directly to OP before first instance divisions is thus not at all convincing.
This is the more so since in G 1/21 the EBA has, for reasons that are easy to guess, limited its decision to OP before the boards, whereas the questions of the referring board were not limited to OP before the boards.
This will remain the failure of the EBA to decide about OP in conformity with the EPC.
Contrary to the repeated statements of the president’s representative during the OP in G 1/21, the EPC cannot be amended by secondary legislation. The EPC can only be amended pursuant to Art 172, whereby Art 164(2) puts clear limits to amendments of the Implementing Regulations by the Administrative Council.
Let’s hope that another party to an OP before first instance divisions, and forced to have OP by ViCo rather than in-person, will come up with a more pungent argumentation.
https://www.epo.org/de/boards-of-appeal/decisions/t221625du1
Comments
2 replies on “T 1625/22 – No violation of the right to be heard by an OD for holding OP in form of a ViCo without the consent of a party”
Dear Mr. Thomas,
Your statement “The EPC can only be amended pursuant to Art 172, whereby Art 164(2) puts clear limits to amendments of the Implementing Regulations by the Administrative Council.” is perfectly correct, but G 1/21 was not the first time the EBA ignored this legal principle. It had already done so in G 3/19. Remarkably, all (or an overwhelming majority of) the amicus curiae briefs submitted by individual patent attorneys or their professional organizations had raised this principle, and the EBA in G 3/19 did not follow it – instead introducing the infamous “dynamic interpretation” of the EPC.
Call me cynical, but the EBA and the President of the EPO are effectively free to do as they please. In that, they are very much like the UPC. Let it be recalled that a high-profile lawyer proponent of the UPC said, with respect to its potential legality issues: “Maybe, but which court will you get to hear your claims?”
@ Extraneous Attorney
I can only but agree with you.
The way the EBA has handled cases G 1/21 and G 3/19 was by blatantly ignoring the legal principles enshrined in the EPC.
In both cases, the reply was not a legally well founded reply, but purely a political one. This is direct consequence of the fact that the BA and the EBA are not really independent from the EPO and its upper management.
The BA and EBA will only be independent from the EPO and its upper management, on the day the president of the BA will be allowed to directly send its budget to the AC.
Whatever R12a-d EPC might say, it is only by delegation of the president of the EPO that the president of the BA can exercise the right to propose the members, including the chairmen, of the BA and the members of the EBA for appointment by the AC, and the right to be consulted on their re-appointment and on the appointment and re-appointment of external legally qualified members. This looks like being independent, but cannot qualify as independent.
The boards of appeal are not even allowed any longer to adopt their own rules of procedure. It is the “Boards of Appeal Committee” which is entrusted by this task. This BAC is a direct emanation of the AC!
The EBA, as revision instance, should not be composed by members of the BA, but different and independent members. The external members acting under Art 112 are sometimes there as mere decoration. I have seen some never putting any question to the parties during an OP.
The AC really missed a chance to render the BA truly independent by not following the proposals of reform of the BA which were proposed by the EPO itself in 2004/2005.
There is nothing cynical in stating that the EBA and the president of the EPO are effectively free to do as they please. In that, they are indeed very much like the UPC.
The UPC is the result of intense lobbying of some industry managers, but much more of high-profile lawyers who could expect to even better fill their already deep pockets. The just used SMEs as a fig leaf to hide and give their endeavour a better look.
Where have you seen a court so blatantly ignoring its founding text, when you see the Presidium’s decision about the provisional allocation of duties to the remaining Paris and Munich sections of the central division.
The same applies the decision of the Administrative Committee under Art 87(2) UPCA introducing a Milan section of the central division. Which was the Union law or the international treaty on patents which could justify the amendment of the UPCA? Art 87(2) was never intended to repair the damages caused by Brexit. By the way, has the UK ever left the UPCA?
The latter doe not even have an exit clause! Have you seen one reference to the VCLT in all those decisions? At least the BA and the EBA refer at times to the VCLT.
I have not yet given up the hope that a court in a contracting state, or even the CJEU, can come to the conclusion that the UPC is not a court established according to Art 6(1) ECHR.