The present decision is interesting for two aspects:
- Holding OP in the form of a ViCo in the future and discretion given to the BA in Art 15a(1) RPBA20.
- Common general knowledge without any evidence but the personal knowledge of members of the BA.
OP by ViCo
In view of the pandemic developments and the resulting high incidences in Bavaria at the relevant time (21.03.2022), the risk for an infection for all participants, including the board, was weighed up against the respondent’s reservations as to holding VICO-based oral proceedings, the complexity of the case, and the suitability of the case for a hearing in this format.
The board came to the conclusion that a ViCo-based hearing was indeed a suitable format for such proceedings under Article 15a(1) RPBA
The Board added that the compliance of Article 15a RPBA with the EPC has not been questioned by the Enlarged Board of Appeal in case G 1/21, whether or not a “general emergency” applies.
Article 15a RPBA thus remains applicable, without any qualification, to these and future appeal proceedings.
Lack of inventive step
The patent was maintained according AR3 and the joint opponents appealed this decision.
The patent concerns the wireless transfer of content such as weather information, voice and in-flight entertainment (IFE) between an aircraft 108 and a server 106 of a ground station while the aircraft is at a parking gate of the ground station
A well-known system for this purpose is the so-called “Gatelink” approach.
According to the patent, the implementation of this approach typically requires a modification of the airport facility. To address this, the patent proposes a mechanism to prioritise content transfer in accordance with at least the available link speed and the anticipated connection time between aircraft 108 and server 106.
Claim 1 as maintained comprised feature (f) which reads as follows
(f) in accordance with at least one of available link speed and anticipated connection time between the first communication device and the second communication device (106).
The board endorsed the objective technical problem identified in the appealed decision and frames it as “how to provide for an alternative implementation of the traffic prioritisation mechanism of E21”. E21 =: EP 1 793 512 A2 is the only piece of prior art used in opposition.
E21 teaches creating the communication priority matrix by adopting the criteria of
(i) the number of available access points,
(ii) a detected signal strength and
(iii) how many clients are associated with each access point.
In contrast to the OD’s positive assessment in the decision under appeal, in the board’s view it would have been immediately apparent for the skilled person in the field of communication networks, based on their common general knowledge, to apply one of “available link speed” and “anticipated connection time” as an alternative for criteria (i) to (iii).
For the BA it would have been obvious to arrive at the first one of the two alternatives mentioned in feature (f) by starting from E21 and drawing solely on their common general knowledge.
Due to the fact that an airport schedule will typically include an arrival and a departure time, the skilled person would readily have considered the second alternative of feature (f) as an equally valid option based on the teaching of E21 itself.
The BA concluded that claim 1 as maintained lacks inventive step over E21. The same two reasons applied to AR1.
Regarding claim 1 of AR2, it was immediately apparent for the BA that the central TWLU client of paragraph  of E21 must enable Aircraft/Ground Systems Communication device 70 shown in Figure 3 of E21 to support the type of link established by the access points, otherwise no communication would be possible.
Claim 1 of AR3 is a mere juxtaposition of the features of claim 1 of AR1 and AR2, which cannot lead to the acknowledgement of an inventive step either.
The patent was thus revoked.
OP by ViCo
It is true that compliance of Article 15a RPBA with the EPC has not been questioned by the Enlarged Board of Appeal in case G 1/21, the present board, in considering that OP by ViCo will apply to future OP before the BA, has ignored the reasons brought forward by the EBA in G 1/21.
As the end of the pandemic has not been officially declared at the EPO, it seems thus acceptable to hold OP by ViCo.
However, G 1/21 shows that Art 15a (1) RPBA20 will need a revision following the reasons given in G 1/21.
Otherwise G 1/21 will have been useless.
The discretion offered in G 1/21 should be limited to “emergency situations” or if at least one party requests holding OP in form of a ViCo.
Mixed mode ViCo are perfectly possible. If both parties agree to OP by ViCo, it should be offered by the BA.
Whether the members of the BA can be located at different places according to Art 15a(3) RPBA20 remains to be seen, as there is no legal basis for such an arrangement in the EPC. Simply saying that there is nothing against it in the EPC is not convincing if one sees what is happening in contracting states. Art 125 should apply.
Lack of inventive step
The present decision reminds of T 1370/15 and of T 1090/12 in which the respective BA held that a board is allowed to introduce ex officio common general knowledge without evidence of such knowledge which prejudices maintenance of the patent or may lead to a refusal.
The present board (3.5.03) is a different board than in T 1370/15 (3.5.04), but both are in the computer/telecom area (3.5.03) which used common general knowledge without an once of proof.
In T 1090/12 the board held in an ex-parte procedurethat there is “no general obligation on a board to provide documentary evidence for the existence of a piece of common general knowledge”.
In T 1370/05 and T 1090/12 the boards refused to refer a corresponding question to the EBA.
This development in the computer/telecom area is thus rather worrying and it is to be hoped that this type of behaviour will not spread to other technical areas.
At least the matter should be referred to the EBA as it appears to be an important problem of law, whether the BA like it or not.
The RPBA have given the BA a great deal of discretion. The discretion of the boards should however have limits. In those three cases the limits of the discretion granted to the BA have clearly been exceeded.
Can you imagine a BA accepting that a division of first instance or a party mentions common general knowledge without providing any evidence? I do not.
Why should the BA be allowed to do what they would not tolerate from others?
10 replies on “T 2526/19-OP by ViCo-Art 15a RPBA-Common general knowledge asserted by a BA without any evidence”
Similar observations and comments were posted to the DeltaPatents blog of TUESDAY, 2 FEBRUARY 2021 titled “T 1370/15 – A board is allowed to introduce common general knowledge without evidence also in inter partes” (https://dp-patentlaw.blogspot.com/2021/02/t-137015-board-is-allowed-to-introduce.html#more).
In particular, also there it was commented that it is strange that a Board does not need to provide evidence, and that a Referral would be appropriate.
In 1090/12, the appellant referred to Guidelines G-VII, 3.1 (“”an assertion that something is common general knowledge need only be backed by documentary evidence (for example, a textbook) if this is contested”) and submitted that this passage is binding on the boards of appeal when exercising the power of the examining division.
The Board then indicated that they are not bound by the Guidelines (true, but note that Art.20(2) RPBA2020 provides: “If, in its decision, a Board gives a different interpretation of the Convention from that provided for in the Guidelines for Examination, it shall state its grounds for doing so if it considers that the decision will be more readily understood in the light of such grounds.”)
The position takern by the Board is stranege in view of the general principle from established case law in the Case Law Book, In the 9th edition, 2019 edition that provides in I.C.2.8.5 (same text in 8th edition, July 2016, in force when the decision was issued) the following as the general rule:
“Where an assertion that something is common general knowledge is challenged, the person making the assertion must provide proof that the subject-matter in question is in fact common general knowledge (T 438/97, T 329/04, T 941/04, T 690/06, T 2132/16). In the case of any dispute as to the extent of the relevant common general knowledge this, like any other fact in contention, has to be proved, for instance by documentary or oral evidence (T 939/92, OJ 1996, 309, see also T 766/91, T 1242/04, OJ 2007, 421; T 537/90, T 329/04 and T 811/06). The proof is regularly supplied in citing literature (T 475/88). According to T 766/91 and T 919/97, evidence of general technical knowledge need be submitted only if the latter’s existence is disputed.”
Note that this section refers to “person” and not to “party”, such that it refers to parties as well as EPO divisions and bodies.
The argument in T 1090/12 that the EPC does not provide for such an obligation is in my view not convincing: it is a general principle of law that the right to be heard includes the right to be able to understand what is stated and as part of that the principle “Who asserts needs to provide proof if the assertion is challenged” applies.
I had forgotten that Delta Patent had already commented on the matter in 2021. I merely mentioned this decision in a presentation on case law.
It is now the third decision of the same kind T 2526/19, coming from the same group of boards which made me react.
Referring a board to the Guidelines is as useless as useless can be. The boards are not bound by the Guidelines. At best the boards comment on the Guidelines. Sometimes the EPO follows the boards, e.g. purposive selection is a question of IS not of N, cf. G-VI, 8. Sometimes they do not, e.g. three point test or former essentiality test, cf. H-V, 3.1. And in the last case, the pressure from the boards was even stronger than for the “purposive selection”.
I agree with you that Art 20(2) RPBA20 should have been applied. It is an Art of the RPBA which is more or less ignored by the boards, although it was already present in the RPBA07.
If a board claims something is common general knowledge, why is it then not possible to bring the corresponding evidence? I remember of an old decision from the BGH, in time ante EPC in which it was held that is something is common general knowledge, they should at least be two sources to demonstrate it. This might go too far, but no evidence is no good either.
The problem with the boards is that they seem to develop more and more in little islands and each chair does more or less what it wants. As far as procedural aspects are considered, it has become a lottery for appellants. This is not good.
The problem is that the RPBA20 have given the boards a very large amount of discretion and there is no instance to verify the way this discretion is exercised. This is one of the problems of the present structure of the BA. A revision instance, not only for procedural aspects but also for substantive aspects, and very often discretion is not only a matter of procedure but of interpretation, should be set up. I know I am dreaming.
When I read this as a UK and European patent attorney, what comes to mind is the notion of “judicial notice”. See Link below to Wikipedia. Like M. Thomas, I too worry about a TBA announcing what is the common general knowledge (cgk) of the person skilled in the art but the danger of injustice depends of course on the specific fact at issue and declared by the Board to be true. The dictionaries give as an example of a fact that can be assumed by the decision-maker without supporting evidence that a particular date (say, 8 May 2022) fell on a particular day of the week (Sunday). Such facts are significantly more notoriously true than what the relevant skilled person “would have been immediately apparent” about timetabling. It must be right, to accept as true facts the truth of which no reasonable person can seriously deny, without supporting evidence. But when it comes to the mindset of the skilled addressee, are Board members in a position to declare that mindset as a fact, without supporting evidence? Seriously?
In England, when the validity of a patent is in dispute, the core of the battle between the parties over the underlying facts, the key issue is often the cgk of the relevant skilled person. To my mind, it is absurd for an appeal instance suddenly to inform the parties, without any evidence at all, what was the cgk of the skilled person, back on the date of the claim, up to 20 years earlier than 8 May 2022. But, hey, do we have time any more, for careful administration of justice in the field of patents? Isn’t that somewhat disproportionate, for a mere business tool? I mean, as the second wife of Boris Becker declared on hearing of his prison sentence, something like: “It’s so unfair. I mean, it’s not as if he killed anybody, is it?” Patents don’t hurt anybody either, do they. They have become mere cards for Big Business to play card games with each other. You win some games, you lose others. So what? Must we really apply to mere patent cases the highest standards of fact-finding that courts have devised in criminal cases where liberty is at stake? These days, life’s too short, right? The Board’s attitude to cgk is fitting to an overall “more likely than not” standard of fact-finding in patent cases, isn’t it?
Dear Max Drei,
I can follow you to a certain extent when you plead for the rule “more likely than not”, but this is not what I would expect from a BA.
There are features which are notoriously know, even in technical matters. When there is talk about Vickers hardness, every person skilled in the art know what it means. When we come to viscosity, it becomes a bit trickier. Not only does the temperature play a role, but also the nature of the fluid whose viscosity is being measured. It is common general knowledge that a non-Newtonian fluid will behave differently with time and that temperature plays an important role in viscosity. Unproven common general knowledge should stop here. In all three decisions at stake, the boards went way further than what I consider being notorious knowledge.
Anything going beyond those “notorious” facts or knowledge should be supported by evidence.
I can also follow you when patents are becoming more and more play cards for big business, but if we want a minimum of rule of law, should we accept the rule of the strongest? Patent can hurt SMEs and very badly, so I do not entirely follow your comparison with BB.
I agree with you that it is absurd for an appeal instance suddenly to inform the parties, without any evidence at all, what the cgk of the skilled person was, but this does not discharges it from its duties.
Life might indeed be short, but should we accept a life without the rule of law? Even in patent matters. I still do not. But when you see what is happening with the EPC and the changes forcibly introduced by secondary legislation, one wonders if it is not a fight of the past.
“Can you imagine a BA accepting that a division of first instance or a party mentions common general knowledge without providing any evidence?” sadly I can. In fact, should not the BA defer to the OD’s knowledge of the CGK, which ought to be closer to the technology, after all. You would hope that the BA would be the safeguard against this, but it seems not…
Your suggestion is interesting, but I do not think it would be welcomed by the boards.
We have three decisions showing that cgk is something they are bathing in, so it can be put on the table a the first opportunity.
I however do not think that they would accept a party or a division of first instance to come up with cgk without an ounce of proof. But they can, and this is what makes me sad.
Daniel, I am not against an Examiner citing no documentary evidence what is the cgk of the skilled person, but asserting to Applicant what it is and inviting from Applicant a reasoned rebuttal. That, to me, is a reasonable way to examine EPO patent applications efficiently. What does trouble me is when a court, especially an appeal instance, relies upon its own cgk when writing its reasoned decision, without first having given the Applicant or patent owner a fair chance (or any chance at all) to rebut the presumption. That’s a denial, by a Board of Appeal, of the right, of the opportunity, to be heard, and that’s what I would criticise.
Dear Max Drei,
I cannot but agree with you. It cannot be left to a board to allege cgk without the ounce of a proof. To me the decision is not properly substantiated and the proprietor did not have a fair chance to defend himself. I have strong doubts that the right to be heard under Art 113(1) has been respected.
There is very little to be gained from the minutes of the OP before the BA. IS was discussed and that’s it.
As proprietor it could have been a good move to raise during OP an objection under R 106 about the absence of proof of the alleged cgk. As it has apparently not been done, it is too late now. It would have been interesting to hear what the BA would have had to say about the absence of proof. And if the objection would have been dismissed to know what the EBA would have had to say.
It is an important problem of law, but as it only applies to the procedure of the BA, a referral under Art 112 (1,b) seems not possible. This is the more so since we not even have divergent decisions on this matter.
The BA might have even have been correct with its allegation about the cgk, but losing a patent due to apparently unproven cgk is bitter.
It reminds me of a very old decision of the German Federal Court holding that, if something belongs to cgk at least two different sources should be quoted. This might go a bit too far, but at least one should be quoted.
Daniel, I gather from you that i) during the OP’s before the TBA the Board put its cgk point to the patent owner and gave the owner an opportunity to respond. That weakens my point, that the owner’s right to be heard was not respected, but doesn’t destroy it. The Board should have given the owner more time to come up with evidence, to rebut the Board’s point. Raising its cgk point for the first time at the Hearing is an ambush of the patent owner, and Boards should not be behaving as outlaws ambushing citizens going about their lawful business.
From now on, it seems, we have to be alert, at oral proceedings, against being ambushed by outlaws sitting up in front of us, playing at being judges in a court of law.
Dear Max Drei,
I would even say that if late submissions by the parties are not allowed, the same has to apply to the boards. Why should the boards have privileges over the parties?
I am therefore still of the opinion that the right to be heard was not respected as the proprietor had no chance to defend himself.
The RPBA20 have given the BA a large amount of discretion. The problem is that there is no instance to check whether this discretion has been correctly applied or not.
It depends too much on the board in charge of the appeal case. Case law on procedural matters is applied in too many nuances and there is no reliability. The present lottery effect when filing an appeal is not acceptable.
When it comes to matters of substance like citing cgk it becomes even worse.
The reform of the BA of 2012 has not improved the situation as the members of the boards have to show a certain “performance”. The criteria applied to assess the performance should at least be made public.
On top of it, the RPBA20 make the situation even worse due to the different ways the boards apply the discretion given to them.
A proper reform of the appeal system of the EPO is overdue. They should become truly independent and the EBA should not be composed of members of the BA but should be set up as a different and independent judicial unit.