EP 3137345 B1 relates to a multi strip beam-forming apparatus and methods, and more particularly to forming automotive bumper reinforcement beam.
Brief outline of the case
In a first decision, T 1018/21, the patent was maintained in amended form by the board.
The present appeal was filed after the OD denied the correction of the minutes of OP requested by the proprietor.
The appeal was considered not admissible by the board.
The proprietor’s point of view
The main argument of the proprietor is that the communication denying the correction was a decision, which adversely affected the proprietor and terminated the proceedings. Thus, an appeal against this decision was admissible.
In view of the new legal situation, in particular with respect to the new Art 12(1,a) and 12(4) RPBA, “arguments”, not included in the former Art 12(4) of the RPBA07, the case law on the question as to whether a correction of the minutes of OP constituted an appealable decision was obsolete.
Furthermore, the proprietor considered that the fact that the second paragraph of the “decision” concerning the correction of the minutes referred to “the division…” indicated that all members of the OD were involved in the explanations given, so that it was clear that a decision and not a mere communication was taken.
Moreover, the right to be heard under Article 113 EPC was infringed, since arguments not recorded in the minutes of the first instance proceedings might not be considered later on by the board.
The proprietor further held that an appeal against a decision rejecting the correction of the minutes should be admissible in order to allow a review of facts and arguments submitted by the party at the OP but not considered by the first instance. This was in accordance with Art 125 and the principle of the judicial review of administrative decisions.
The board’s decision
The Board considered the established case law of the boards on what constitutes a decision to be fully applicable and followed it. According to it, the minutes of OP and their correction are not decisions in the sense of Art 106. Reference was made in particular to the decision of the Enlarged Board of Appeal R 4/18, Reasons 11. This established case law has also been confirmed in recent decisions issued under the RPBA 2020, as for example, in T 255/22, Reasons 3.2.1.
The board did not see how these principles could be affected by the alleged changes to Art 12(1) and (4) RPBA. Procedural issues arising under the RPBA before the boards as second instance regarding submissions not reflected in the minutes and their possible consideration as an amendment of the case do not convert the minutes of the previous instance (or a communication relating to their correction) into an appealable decision. Thus, there is no reason to consider the consistent case law on the correction of the minutes as obsolete.
The board further noted that another feature of a decision is that it involves a reasoned choice between legally viable alternatives, see T 934/91, OJ 1994, 184, Reasons 5. This is not the case for minutes of OP, and any correction thereof, the purpose of which is to reflect the course of the oral proceedings, see T 231/99, Reasons 1.1 and 1.2.
The consistent case law of the Boards of Appeal has been that the minutes of OP, and the correction thereof, are not decisions in the sense of Art 106, see T 838/92, Reasons 3 or T 212/97, Reasons 2.2. That, in all these cases, a separate formal decision was issued does nothing to alter the conclusion that minutes are not considered to be a decision.
The competence for drawing up the minutes of oral proceedings is regulated in the EPC. An employee is designated to draw up the minutes, cf. R 124(3). The minutes writer and the employee who conducted the OP, i.e. the chairperson, authenticate the minutes by their signatures. This was also the case with the present minutes. The communication concerning the requested correction was also signed by the minutes writer and the chairperson.
Furthermore, the board could not follow the proprietor’s complaints relating to the right to be heard under Art 113(1) and to the right to a judicial review of administrative decisions on the basis of Art 125.
However, the right to be heard does not generally include the right of the parties to have statements recorded in the minutes.
In addition, the board failed to see how the refusal to correct the minutes could preclude a judicial review of the administrative decision on the opposition. If an essential argument of a party is not reflected in the minutes of the first instance proceedings, and the party has unsuccessfully requested a corresponding correction, but is able to demonstrate in the appeal proceedings that the argument was indeed admissibly raised and maintained, it will not be regarded as an amendment according to Art 12(4), first sentence, RPBA.
Comments
Whilst it is the right for a party to request a correction of the minutes of OP in first instance, there is no right that the correction has to be accepted. An appeal after the refusal of such a correction of the minutes is clearly not admissible.
As the board was not present at the OP before the OD, the board can only rely on the minutes. In any case, a board is not competent to decide on the content of the minutes, cf. T 1481/19.
It is nothing new that parties and their representatives are expected to carefully examine the content of the minutes, in particular their completeness and correctness, immediately after receipt and, if necessary, to object to them promptly, cf. T 1679/17 or T 3272/19.
In other words, a refusal of a correction of the minutes is not an appealable decision and a corresponding request has to be filed promptly.
In T 2584/19, commented on this blog, it was held that an alleged SPV needs often to be supported a request for correction of the minutes.
On the other hand, it is established case law that it is not the function of the minutes to record statements which a party considers will be of use to it in any subsequent proceedings in national courts, for example in infringement proceedings as to the extent of protection conferred by the patent in suit.
This is because such statements are not “relevant” to the decision which the Board has to take within the meaning of R 124(1). Such matters are within the exclusive jurisdiction of the national courts. See T 319/19, T 3272/19, or T 552/18.
It is also not the function of the minutes to record statements which can be possibly relevant in any subsequent proceedings, for instance relating to withdrawn requests. See T 2545/16, whereby this decision confirms T 71/06, T 240/09 or T 555/01.
In R 17/09, Reasons 9,it was held that the refusal to allow recording of OP is not a procedural violation. The fact that validation of the minutes was not demanded is neither a procedural violation, as it is not required by the EPC, nor is it the usual practice of the boards. This applies mutatis mutandis to minutes of OP before first instance divisions.
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