From time to time parties request correction of the minutes of OP before a deciding body of the EPO. Sometimes they also request
This decision deals with a request for correction of the minutes of OP before a BA.
In this post, requests for recording the statement of a party will also be dealt with.
The proprietors request for correction of the minutes
The proprietor requested two corrections of the minutes of the OP held before the board such that “the course of the proceedings and position of patent proprietor be correctly described”.
First correction requested
With the first correction the proprietor claimed that it immediately protested against non-admittance of the data contained in Annex II of the minutes of the OP before the Opposition Division,
Second correction requested
With the second correction, the proprietor claimed that the opponent conceded that it was common general knowledge that …….. The proprietor also wanted to see in the minutes that after deliberation, the Board decided not to admit the opponent’s submission that it is common general knowledge that ………
The proprietor further wanted to see in the minutes that, inter alia, the Chair had announced that it did not distinguish between the opponent’s concession as to improved viscosity increase performance of Group II base oils and its reference to D4 as evidence of common general knowledge.
The proprietor claimed to have protested against non-consideration of the Opponent’s concession. This concession should also be mentioned in the minutes.
The board’s reply to the proprietor’s requests
The board reminded that pursuant to R 124(1), the minutes of OP shall be drawn up containing inter alia the essentials of the OP and the relevant statements made by the parties.
The board also referred to T 0263/05 (OJ 2008, 329, headnote, point IV) in which it was held that the “minutes of OP before the Boards of Appeal should record the requests of the parties on which a decision of the Board is required, such as […] the form in which the proprietor seeks maintenance of the patent […]. The minutes should also record specific statements which have an impact on the definition of the subject-matter, such as statements of surrender or abandonment of subject-matter, where these are relevant to the decision to be taken.
The arguments of the parties should not be recorded in the minutes, nor should statements or admissions made in OP which a party considers will be of use to it in any subsequent proceedings in national courts but which have no bearing on the decision which the Board is required to make, such statements or admissions neither constituting “essentials of the proceedings” nor “relevant statements” within the meaning of R 76(1) EPC73″ = R 124(1).
The board noted that neither of the two requested corrections concern the submission or the withdrawal of a request, nor a surrender or abandonment of subject-matter.
Thus, neither of the two requested corrections fulfil the requirements as set out above by the cited case law of the Boards of Appeal for inclusion in the minutes of OP. For this reason alone, the requested corrections had to be refused.
The first correction
According to the board’s written notes taken during the OP and the recollection of the members of the board, the proprietor did not make any submission after the board had deliberated and announced its conclusion on the admittance of the patent proprietor’s referring to the experimental data contained in the a proprietor’s letter and Annex II to the minutes of OP before the opposition division.
The board’s position was confirmed by the statement reported in the first full paragraph on page 3 of the minutes, which states that after board’s deliberation and announcement, “the Chair asked the patent proprietor whether it had further requests or observations in respect of its submissions contained in the letter dated 15 March 2022. The patent proprietor stated that there was no other submission in this regard”
Therefore, no submission, let alone a “protest”, was made by the proprietor at that point in time of the OP.
It follows that the first requested correction does not correctly reflect the course of the OP and also on this ground the request to insert this passage into the minutes had to be refused.
The second correction
According to the board’s written notes taken during the oral proceedings and the recollection of the members of the board, the chairman of the board never announced what is claimed in the requested correction.
The board added that the chairman takes precise notes, at the end of the deliberation, of what will be announced to the parties. By checking these notes, the board has no doubts that the announcement put forward by the patent proprietor was never made by the chairman.
For the board, the proprietor did not make any submission, let alone a “protest”, after the board had concluded that the main request was not allowable.
Therefore, the second requested correction does not correctly reflect the course of the OP and also on this ground the request to insert this passage into the minutes has to be refused.
When requesting a correction of the minutes, parties should be aware that the boards have their own recollection of what happened during the OP. In inter-partes proceedings, the other party might also have a different recollection of what happened during the OP.
Request for correction of the minutes
When looking at the case law in the matter, the BA can be considered as not granting requests for correction of the minutes before them, even in view of the possibility of a petition for review under Art 112a. See for instance T 888/17 or T 1934/14
For minutes of OP before the EBA acting under Art 112a, cf. R1/13.
In T 1721/07 the Board made clear that the content of the minutes cannot be left, be it in part or in totality, to one of the parties involved, cf. Reasons 15 and 17. It also added that even if correction of grammatical mistakes should not be contentious, minutes should not even be corrected in that respect insofar as the mistakes do rend lead to wrongful minutes.
Timeliness of the request for correction of the minutes
Decision T 1891/20 is interesting in this respect: if a party considers that the “essentials of the oral proceedings” or “relevant statements” within the meaning of R 124(1) are incorrect or missing in the minutes of oral proceedings, they must file a request for correction of the minutes in the shortest time possible after their receipt. This ensures that the relevant facts and submissions are still fresh in the minds of the members of the deciding body and, if applicable, the other party or parties (Reasons 9.2).
Waiting for the written decision before submitting a request for correction of the minutes is incompatible with a party’s obligation to request correction of the minutes in the shortest time possible after their receipt (Reasons 9.3).
Request for recording the statement of a party
Requests for recording in the minutes statements of a party are never successful either. In, e.g. T 319/19, Reasons 4, 3d §, the board held that 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 (Case Law of the Boards of Appeal 9th ed. 2019 III.C.7.10.2).
No appealable decision
Last but not least, the refusal of the request for correction of the minutes by the competent department before which oral proceedings is not considered an appealable decision within the meaning of Art 106(1), see T 613/14, Reasons Point 6.1.