Brief outline of the procedure
Both proprietor and opponent appealed the decision of the OD to maintain the patent according to AR1.
Claim 8 as granted was held to infringe Art 123(2) so that the patent could not be maintained as granted.
The proprietor filed new AR in response to the opponent’s statement of grounds of appeal, inter alia AR 3 and 3A, which replaced the previously filed AR. In addition, amended description pages 26 and 42 were filed.
The BA has decided that opponent’s arguments submitted against AR 3 and 3A were too late and therefore not admitted under Art 13(2) RPBA20. Those were filed after receipt of the summons to OP.
AR 3 was held lacking IS and the BA decided to maintain the patent according to AR 3A.
The objection under R 106
During OP, the opponent raised an objection under R 106 claiming that its right to be heard under Art 113(1) had not been respected.
In its objection under R 106, the opponent brought forward that the amended patent documents filed by the proprietor, i.e. AR 3 and 3A, had not been examined for compatibility with the EPC.
For the opponent, this compatibility had not been discussed during the OP and thus the opponent had not been given the opportunity to submit arguments on this compatibility.
The non-admission of its arguments into the proceedings had made it impossible for the opponent to comment on compatibility with the EPC, not even in a prima facie way.
For the opponent, the objections and arguments in in its last entry were not discussed.
In its appeal, the opponent also argued, with reference to Art 101(3,a), that the board could only uphold a patent if it met the requirements of the EPC.
It referred to the Board’s duty of ex-officio investigation and to the fact that Art 101(3,a) takes precedence over the provisions of the RPBA20.
The opponent further quoted G 9/91, point 19 of the reasons, according to which amendments to the claims or other parts of a patent made in opposition or appeal proceedings must be fully examined for compliance with the requirements of the EPC, e.g. Art 123(2 and 3).
The board’s position
For the Board, there was no violation of the right to be heard.
First of all, the board noted that the compatibility of AR 3 and 3A with the EPC was discussed at the OP. With regard to the “formal” requirements, the opponent II referred to its written submissions at the OP for AR 3 and it was then discussed with the parties whether the subject-matter of claim 8 of AR 3 met the requirements of Art 56.
With regard to the objections to claim 8 of AR 3A, apart from the objection of lack of inventive step, the opponent referred to its written submissions. It was then discussed with the parties whether the subject-matter of claim 8 of AR 3A met the requirements of Art 56.
However, the board agreed with the opponent that it did not discuss all the requirements for compatibility with the EPC during the OP.
For the board, the submissions in the last entry of the opponent were not admitted in the proceedings and consequently the parties were not to be heard on them.
The board was also not convinced by the arguments relating to the duty of ex-officio examination under Art 114 and Art 101(3,a), as well as to the hierarchy of norms.
The provisions mentioned do not as such concern facts on which a request for review could be based. The grounds set out in Art 112a(2) are exhaustive in this respect and neither an infringement of Art 114 nor of Art 101(3,a) is mentioned there.
The Board did not question the hierarchy between Rules of Procedure of the Boards of Appeal and those of the EPC, see also Art 23 RPBA20.
For the board, the opponent failed to recognise that Art 114(2) supplements the principle of examination by the Office enshrined in Art 114(1) and that Art 114(2) allows the Board not to take into account facts and evidence which are submitted late by the parties. Art 13(2) RPBA20 is also based on Art 114(2), at least as far as the submission of facts and evidence is concerned.
The board admitted that Art 114(1) may be in tension with the requirement of Art 101(3,a). However, at least these two provisions are hierarchically on the same level, because both provisions are articles of the EPC.
For the board, the provision of Art 101(3,a) cannot be understood to mean that all requirements of the EPC must be examined, see for instance G 3/14 and G 1/91, nor that these requirements must always be examined ex officio.
If the latter were the case, Art 114(2) would be devoid of meaning, since it precisely assumes that facts and evidence submitted late need not be taken into account.
Rather, in opposition appeal proceedings, the requirements of the EPC must be examined to the extent that objections were raised by the opponent in due form – i.e. not late and substantiated. In the present case, the objections of the opponent to AR 3 and 3A were disregarded as they were only raised after the summons to OP had been issued.
For the sake of completeness, the board reminded that a board is free to raise and examine objections ex officio, at least within the scope of competence and examination set, for example, by the Enlarged Board of Appeal. The board also referred to the limits set in G 10/91 and G 3/14. However, there is no unrestricted obligation to do so in opposition appeal proceedings.
Referring to Point 18 of the reasons in G 9/91 and G 10/91 the board noted that the appeal procedure is by its very nature less investigative than an administrative procedure. Although Article 114(1) EPC formally covers also the appeal procedure, it is therefore justified to apply this provision generally in a more restrictive manner in appeal than in opposition procedure.
The board further noted that it cannot be inferred from point 19 of the grounds for decisions G 9/91 and G 10/91 that there would be a duty to examine requests filed in appeal proceedings ex officio for all requirements of the EPC.
For the board, an unrestricted duty to examine ex officio understood in this way would also not be compatible with Article 114(2) EPC.
Trying to circumvent the non-admissibility of late objections against requests filed in appeal by requesting the board to carry out ex-officio the examination of those requests is doomed to fail.
In the present case the opponent should not have waited the issuance of the summons to react to the new AR filed in reply to its own appeal.
It is also possible to say that Art 114(1) is not there to compensate for the procedural shortcomings of the opponent in appeal.
Even if the opposition procedure can be considered more investigative than the appeal procedure, Art 114(1) is as well not there to compensate for the procedural shortcomings of the opponent in opposition. The OD has the discretion to admit late submissions, but it does not mean that it has to examine ex-officio all requests for their conformity with the EPC. Only properly substantiated requests have to be examined.
On the other hand, patents which manifestly should not have been granted should not be maintained. In such a situation Art 114(1) applies, but the timeliness of the objections, cf. Art 114(2) has also to be taken into account when exercising the discretion to admit or not late objections.
In opposition the duty of the OD or the BA is prima facie to be neutral and not to act in favour of the opponent or of the proprietor.
Art 13(2) RPBA20 is clearly in line with Art 114(2). It simply emphasises the fact that the later an opponent comes with objections, the more difficult it will be to have those admitted. This also applies to late requests of the proprietor; the later requests are filed the less chance they have to be admitted. It is thus fair for both parties.
Last but not least, the grounds set out in Art 112a(2) are exhaustive and neither an infringement of Art 114 nor of Art 101(3,a) is mentioned there.