The patent relates to a stair tread element, stair renovation ornament, kit and method.
Brief outline of the case
The OD division issued a decision maintaining the patent in amended form (“main decision”, dated 30 November 2021). A separate appeal was filed by the appellant against the main decision; the appeal against the main decision is registered under case number T 236/22.
The present appeal relates to the refusal of the OD to correct the main decision under R 140 as well as to correct the minutes issued by the OD.
The opponent had requested before the OD that two mistakes in the main decision be corrected: in particular, one heading was wrong as it read “Art. 100(a) EPC (Art. 54 EPC): Inventive step” and should read “Art. 100(a) EPC (Art. 54 EPC): novelty”, and one heading was missing, namely, “Art. 100(a) EPC (Art. 56 EPC): inventive step”). In addition, there was an obvious mistake in that no reasons were given regarding the novelty of the new main request.
As to the minutes, the opponent had requested the correction of several statements contained therein.
The decision is interesting as it makes clear that a BA cannot request an OD to amend a decision under R 140 or to correct the minutes.
The opponent’s position
The opponent argued that the requested correction was not a review of the substance; rather, the reason for requesting correction was that there was no reasoning as to novelty over D14 in the main decision and therefore the substance was “completely lacking“, which deprived the losing party of its legitimate right to challenge the reasoning on which the main decision was based. In this context, reference was made to T 698/94.
The opponent also argued that it did not request the board to correct the reasons. Instead, it was the appellant’s request that the case be remitted and that the OD then correct the decision.
The OD’s position
The OD had agreed that there was a heading (point 38 of the decision) containing an obvious mistake (namely, the mention of Article 54 EPC in the heading “Art. 100(a) EPC (Art. 54 EPC): Inventive step”) and held that this could, therefore, be corrected.
However, the alleged omission of reasons for the decision that the new main request is novel was not considered an obvious mistake under R 140. The text of the decision was not manifestly other than intended and a correction under R 140 was not intended as an occasion for reviewing the substance of a decision already taken.
The only correction that could be allowed under R 140, in the opinion of the opposition division, was the replacement of “Art. 54 EPC” in paragraph 38 with “Art. 56 EPC”, but this did not justify introducing into the file a corrected version of the interlocutory decision.
As to the minutes, the OD took the view that they contained the essentials of the OP and the relevant statements of the parties, and that the opponent’s oral submissions had been correctly summarised. The opposition division thus did not see a reason to correct the minutes either.
The board’s position
The board left open whether the appeal was at all admissible, but nevertheless decided that none of the opponent’s request were allowable, and the appeal fee was not reimbursed.
The mistake in the heading
The board reminded that R 140 allows for the correction of a decision by the deciding body but as well that the deciding body cannot correct all kinds of errors: “only linguistic errors, errors of transcription and obvious mistakes” may be corrected.
It follows from the wording of R 140 that, even if such errors are identified, it is still within the discretion of the deciding body to correct the errors or to decide that the decision remains as it was issued, i.e. including the errors. If the deciding body were obliged to correct this kind of error, R 140 would have been worded differently.
In the present case, the OD exercised such discretion. It acknowledged a particular obvious mistake, but did not issue a corrected version of the main decision because this obvious mistake did not justify, in the opinion of the OD, introducing into the file a corrected main decision.
The opponent has not challenged on appeal this particular exercise of discretion, i.e. of not correcting this mistake even though it was considered obvious by the deciding body. The board did not see a reason to interfere with the way the OD exercised its discretion in this respect.
The board was requested to “confirm” that a specific wording in the main decision was an obvious mistake under R 140 and, as an auxiliary measure, it was asked to confirm what the wording should be, namely the one suggested by the appellant. The board should also “confirm” that the absence of a specific wording in the main decision was an obvious mistake under R 140. The wording at stake was: “Art. 100(a) EPC (Art. 54 EPC): novelty”, instead of what was written in the reasons of the main decision, namely “Art. 100(a) EPC (Art. 54 EPC): Inventive step”.
The board cannot interfere with the manifest intention of what the OD has – in its view and as confirmed in its communication – correctly written in the reasons of the decision (see above, point 2.2.1(a)). Yet it is this that the board would do if it “confirmed” the existence of obvious mistakes in the reasoning given by the opposition division.
The correction as to the substance of the decision
The Board held that it has no competence to correct or amend under R 140 the reasons given by a first-instance department in the written decision, or to order such a correction or amendment.
For a correction pursuant to R 140, the manifest intention of the deciding body is decisive, see G 8/95, Reasons 3.2, and the board cannot interfere with this intention.
The reasons given in the written decision are drafted by the members of the department responsible for the decision, and by them only. Neither the parties nor a board of appeal may correct or amend the wording of the reasons of the written decision; only the deciding body can do so.
In the present case, according to the communication, there was no divergence between the reasons given in the main decision and the intention of the deciding body. On the contrary, the OD made it clear, by refusing the request for correction, that the decision indeed expresses what was intended, acknowledging one mistake, i.e. the erroneous reference to Article 54 EPC in the heading of point 38 of the decision.
The reasons given by the deciding body represent the very substance of the decision, which can be challenged by a party only in an appeal against this decision.
If there is concern as to the substance of a decision, the correct way of addressing a deficiency therein is to appeal the decision. An appeal against the refusal to correct the decision under R 140 is not the correct avenue to pursue, G 8/95, Reasons 3.3.
The board was of the opinion that T 698/94 actually demonstrates that there is a possibility for a party to challenge a lack of reasoning in a decision: the filing of an appeal against this decision.
The correction of the minutes
The Board noted that there is no express legal basis for a correction of the minutes in the EPC and there are no rules in the EPC on the question of which procedure is to be followed for such a correction.
In particular, the correction of the minutes falls neither under R 139 nor under R 140.
The minutes are not a “document filed with the European Patent Office” within the meaning of R 139.
The minutes are also not a “decision” within the meaning of R 140. The case law of the boards of appeal is consistent in that the minutes do not constitute a decision, nor are they part of the decision announced at the oral proceedings, see T 613/14, Reasons 6.1, with further references from the case law).
That the minutes are not a “decision” – within the meaning of Articles 106 and 107 EPC and of Article 112a EPC – was also confirmed by the EBA in R 4/18, Reasons 7, 11, 13. In the same decision, the Enlarged Board confirmed that the correction of the minutes was not a decision, either, see R 4/18, Reasons 11. The present board agreed with this case law.
The boards of appeal have thus no competence to correct or amend the content of the minutes of oral proceedings before a first-instance department, or to order such a correction or amendment.
The level of frustration of the opponent must have been quite high to file such requests for correction of the decision or of the minutes.
The wrong heading did not change the substance of the decision, why then request a corresponding amendment?
Correction of the decision
If important parts of the decision of first instance do not deal with the arguments of a party, then the first-instance division does in general commit a substantial procedural violation as the decision is not well reasoned under R 112. Once the decision is announced and notified to the parties, a first instance division has no competence whatsoever to amend it in substance.
For the same token a board has no competence to order a first instance division an amendment of the decision.
Correction of the minutes
In T 1481/19 it was held that a request for correction of the minutes has to be addressed to the body having taken the decision and drafted the minutes. Only the body before which the OP were held, is competent to correct the minutes.
In T 613/14, quoted by the present board, the board further held that, professional representatives must be expected to be acquainted with the case law relating to the correction of minutes, and that the refusal to correct the minutes of the OP does not constitute a decision open to appeal.
In this respect, it is important to note that a department of first-instance cannot refuse to hold an OP having for subject a request for correction of the minutes, but it will not issue an appealable decision following the OP.
As a board did not participate in the OP before the first instance, it is not in a position to decide what should or not be taken into the minutes.
It is worth noting that there is older case law, e.g. T 1063/02, in which a board considered that requests for amendment of the minutes of OP before the first instance could be granted, for instance in cases of flagrant contradiction with the actual conduct of the proceedings, i.e. there were good reasons to do so. In T 1063/02, the board saw no contradiction, and hence did not order a correction.