The patent was maintained in amended form by the OD. The proprietor appealed the decision.
For the OD, claim 1 as granted lacked inventive step over specific documents submitted by the opponent.
The proprietor claimed that his right to be heard has been violated on two occurrences:
– he could not dispute the common general knowledge used by the opposition division;
– the OD did not consider his arguments disputing this common general knowledge.
The BA only considered the second objection.
The OD alleged in its decision that
“it is commonly known that when a particulate material, such as lignin powder, is used in low amounts as a binder a homogenous distribution of the material is crucial and that such a homogenous distribution is best achieved, when the particles are fine enough. This is immediately evident to the skilled person and as such does not need any pointer at all“.
A similar statement was made in relation to claims 11 and 12.
In its findings of lack of inventive step, the OD used the disputed common general knowledge as a link between the combinations of teachings, within or between documents.
For the BA, the OD made no reference at all to the proprietor’s comments made during the oral proceedings and disputing this common general knowledge. It is not apparent that the proprietor’s arguments on this point were in fact considered by the OD.
For the board, the lack of consideration of the proprietor’s comments amounts to a substantial procedural violation.
The decision was set aside, the file remitted to the opposition division and the appeal fee reimbursed.
The position of the OD using common general knowledge without giving any proof of it reminds of what the boards did in T 2526/19, T 1370/15 and T 1090/12.
In those decisions, T 2526/19 and T 1370/15 in opposition appeal and T 1090/12 in examination appeal, the boards held that not only in ex parte-, but also in inter partes appeal proceedings, a board is allowed to introduce new ex officio common general knowledge without evidence of such knowledge which prejudices maintenance of the patent, to the extent that the board is knowledgeable in the respective technical field from the experience of its members working on cases in this field.
It is not question of preventing a board of appeal from bringing common general knowledge into the proceedings.
Common general knowledge is in principle never late as it is immanent.
What is worrying is that the boards claim that they do not need to show any evidence in support of such an allegation.
The position taken by the boards in those three decisions contradicts the normal case according to which each party bears the burden of proving the facts it alleges.
In such a situation a board is to be considered as a party as well as a first instance division or parties to first instance proceedings.
It is not acceptable for Boards of Appeal to take liberties they refuse to others and are actually not entitled to.
T 3045/19 makes it clear that this way of doing is not correct, especially when the proprietor contests this common general knowledge.
If a deciding body of the EPO alleges common general knowledge, it has the onus of proof like any other party.
The board should have referred the proprietor’s question to the Enlarged Board of Appeal in T 1370/15
The question should however have been formulated as follows:
“In inter partes proceedings, is the board allowed to introduce new ex officio facts and evidence relating common general knowledge without evidence of such knowledge which prejudice maintenance of the patent?“
This question relates, without any doubt, to a point of law of fundamental importance.
The reference in T 1370/15 to R 20/11 (section 3.1) is biased to say the least.
In R 20/11 the common general knowledge relates to a matter of everyday experience of everyone, which does not require any proof. In this case it was ordering by telephone, which indeed is well known, not only to members of the boards but also by the layman.
In T 2526/19, T 1370/15 and T 1090/12, the knowledge might have been general and common, but it was not in a matter of everyday experience of everyone.
It was in very specific technical domains. This is quite different from the situation in R 20/11.