The patent relates to a hob having at least one cooking zone and a method for operating a hob.
Brief outline of the case
The patent was revoked, inter alia, as claim 1 as granted was infringing Art 123(2) in view of an intermediate generalisation. Not all the features taken from the description were kept in the features introduced in the claim,
The understanding of the claim in the decision of the OD was different from that in the statement of grounds of opposition. The proprietor was never heard about this different understanding of the OD.
The OD thus committed a substantial procedural violation.
The decision was set aside, the appeal fee was reimbursed and the file remitted to the OD for further prosecution.
The opponent’s request
The opponent requested that upon remittal, the proprietor was bound by the requests submitted in appeal.
The board’s position
The board held that binding of the parties to requests made in the course of the appeal proceedings in the event of remittal to the first instance (the body which issued the contested decision) is not explicitly provided for in the EPC.
For the board, Art 111(2) explicitly refers to the possibility of changing facts. In the board’s view, this wording encourages a pragmatic approach which does take into account that circumstances, and thus the facts, may change while a case is pending. Binding the proprietor to the requests made in the course of the appeal proceedings would de facto limit its right to defend the patent in the event of such changes in the facts.
The board held furthermore that binding the OD to such requests made by the patent proprietor in the course of the appeal proceedings would contradict the wording of Art 111(2), which provides only for binding the board of appeal to its legal assessment. Such a decision of the board would thus be ultra vires by exceeding the board’s powers as determined by the EPC.
Opponent’s request that upon remittal, the proprietor was bound by the requests submitted in appeal was thus rejected.
Effect of a decision set aside by a BA
If a decision is set aside, it is manifest that the decision has no longer any legal existence as such.
The requests filed during the procedure leading to the decision set aside or in appeal have thus no legal existence as well. The proprietor is then free to file further requests when the case is remitted.
If on a certain topic, e.g. sufficiency, clarity, novelty or added matter, the board concluded that the decision is set aside, and remits for further prosecution on the basis of a given request, those topics cannot be reopened in the framework of the requests which were found sufficiently disclosed, clear, novel or without any added matter.
A normal interpretation of the present decision would thus allow the proprietor to file further requests when the case is remitted to the OD as long as those were filed in due time.
Any further document filed by the opponent would be prima facie late, but not necessarily inadmissible. If, for instance, the proprietor would bring into new claims further features from the description, new documents related to those new features by the opponent should be admissible..
Effect of a decision set aside by the EBA – Problems with R 16/13 and T 379/10
In T 379/10 (1), the BA set aside the revocation of the patent decided by the OD and maintained the patent according AR2.
The proprietor filed a petition for review.
In decision R 16/13, the EBA decided that:
(1) The contested decision is set aside.
(2) The reopening of the proceedings before Board of Appeal 3.3.01 is ordered.
(3) The fee for the petition for review shall be refunded.
(4) The request to replace the members of the Board of Appeal who participated in the annulled decision was rejected.
The EBA held that, the comparative tests in document D11A filed by the proprietor, were not duly taken into account in the board’s decision T 379/10 (1). The possibility of maintaining the patent as granted was dismissed without the proprietor having been properly heard.
In point 7 of the reasons, the EBA rejected the request to replace the members who participated in the annulled decision by other members in the rehearing of the appeal. This was because the proprietor did not substantiate such a request at any time during the review proceedings.
In T 379/10(2), the board held that, where appeal proceedings are reopened following a decision under Art 112a(5), the reopened appeal proceedings are limited to remedying the serious deficiency identified in the review decision, see point 2.2 of the grounds for the decision. The board decided that the remittal had a binding effect.
In point 2.1 of T 379/10(2), the board envisaged two possibilities:
- Either the appeal proceedings as a whole must be repeated as a result of the setting aside of the erroneous decision. In this case, both parties should have the same opportunity to supplement their submissions with new arguments.
- The resumed appeal proceedings are limited to eliminating the serious defect that has been identified. In this second case, the appeal proceedings would only have to be repeated to the extent that the defect is causal for the decision taken. The subject matter of the reopened proceedings is therefore determined by the serious defect which was established by the EBA.
In point 2.2 of T 379/10(2), the board noted that decision R 16/13 does not comment on this question, but limits itself to a statement about the serious procedural defect.
For the board in T 379/10(2), the EBA indicated that the reopening of the appeal proceedings does not require that the parties are again given the opportunity to comment on the entire subject matter of the dispute, but rather aims at eliminating the serious procedural defect found.
The board in T 379/10(2) thus interpreted the decision of the EBA that the reopening of the appeal proceedings does not require that the parties are again given the opportunity to comment on the entire subject matter of the dispute, but aims at eliminating the serious procedural defect that has been identified.
According to the board in T 373/10(2), point 2.2, the EBA justified this with the interest of the general public in a speedy conduct of the reopened proceedings in order to achieve legal certainty.
The problem is that I could not find any corresponding statement of the EBA on this topic in R 16/13.
It is thus difficult to follow the board in T 379/10(2) in its interpretation of R 16/13. This interpretation boils down to a binding effect of the decision of the EBA.
The request for changing the members of the board was dismissed as the EBA merely said that it is because the proprietor did not substantiate its corresponding request at any time during the review proceedings. In view of what happened during the reopened appeal procedure, it could have been good to give some reasons.
The patent was eventually maintained on the basis of claims 1 to 6 of AR 2 filed on 5 March 2013 during the subsequent OP.
Further recent decisions on petitions for review
In two recent decisions of the EBA, the decision of the board was also set aside. In one case, R 3/22, a request for correction under R 139 was not dealt with. In R 5/19, only one of the alleged procedural defects was considered admissible and allowable.
It is worth mentioning that in the recent decision R 3/22, commented on this blog, the decision T 695/18 was set aside as the board did not take into account a request for correction under R 139. The fee for petition for review was reimbursed.
Should the reopened appeal procedure only deal with the correction under R 139, that is apply the reasoning in T 379/10(2), or should the whole appeal procedure be reopened?
In R 5/19, relating to T 2378/13, the opponent/petitioner alleged two procedural defects:
- Without prior notice, the Board of Appeal surprisingly disregarded all of the opponent’s written attacks in the statement of grounds of appeal concerning inventive step (first procedural violation).
- In addition, despite prior notice, document E13 was surprisingly not dealt with during the OP (second procedural violation).
The board decided that the alleged second procedural violation was not admissible as the opponent’s representative did not raise any objection under R 106 during the OP before the board.
The first alleged procedural violation was admissible as it was not possible to raise an objection under R 106. It was also considered allowable.
The decision of the board was also set aside and the fee for petition for review was reimbursed.
The question here is: should, in accordance with T 379/10(2), the reopened procedure be limited to obviate to the first procedural defect deemed allowable by the EBA and the second defect not be discussed at all?
If a decision is set aside be it by a BA or by the EBA, the preceding proceedings should be reopened in full.
If a decision of the OD is set aside, the original decision of the OD does not have any longer any legal existence. It is difficult to envisage that an OD simply deals with the point having led to the substantial procedural violation.
For the same token, if a decision of a BA is set aside by the EBA, it does not appear correct to limit the reopened appeal procedure to the discussion of the procedural violation revealed in the review decision. The binding of the parties to requests made in the course of the appeal proceedings in the event of remittal to the previous instance (the body which issued the contested decision) is as well not explicitly provided for in the EPC, even when the instance is a BA.
In T 379/10(2), other requests were admitted during the reopened procedure, but only within the framework decided by the board.
T 379/10(2) was taken well before the introduction of the RPBA20. It will be interesting to see what effect they could have on a reopened procedure.
If a party cannot be bound by requests filed during an appeal of a decision of the OD, it should also be the case in an appeal decision set aside by the EBA in a review procedure.
In view of the hierarchy of norms, it cannot be that the RPBA limit the reopened procedure following a revision.
In view of the divergent decisions T 2049/18 and T 379/10(2), it could be interesting to hear how the EBA interprets a decision “setting aside” a decision taken by a deciding body of lower rank in general, and whether an exception in the sense of T 379/10(2) should be applied when the decision was taken by a board of appeal .
In a normal interpretation of the terms “setting aside”, it means that the previous decision does not any longer exist, but it could be argued that the situation is different before a board and before an OD.
In Art 112a(5) it is merely stated that “If the petition is allowable, the Enlarged Board of Appeal shall set aside the decision and shall re-open proceedings before the Boards of Appeal in accordance with the Implementing Regulations.” R 108 simply restate that “If the petition is allowable, the Enlarged Board of Appeal shall set aside the decision of the Board of Appeal and order the re-opening of the proceedings before the Board of Appeal responsible…”.
No limitation of the re-opened procedure can be inferred from these legal provisions. I would allow myself to claim that there is no legal basis allowing a board to limit the reopened procedure to alleviating the defect considered allowable by the EBA under Art 112a.
What do you think?