EP 3 625 385 B1 relates to an optimised compression bandage in the form of a knitted fabric obtained by warp knit technology, resulting in a 3D bandage.
Brief outline of the case
The patent was revoked by the OD for insufficiency of disclosure, and the proprietor appealed, claiming that the OD had committed a SPV.
The board acknowledged the SPV and remitted for further prosecution.
The proprietor requested remittal to a different OD.
The board’s decision
According to the minutes of the OP before the OD, the proprietor was not allowed to present arguments concerning the AR. Following delivery of the OD’s opinion that the objection under Art 100(b) was “irreparable”, the proprietor indicated that it wished to rearrange the order of the AR, cf. § 8.2 of the minutes, which the chair of the OD did not allow, cf. § 8.3 of the minutes.
The proprietor having then stated that it had no further comments on the MR, cf. § 8.4 of the minutes, the chair of the OD began the pronouncement of the revocation of the patent, cf. § 8.5 of the minutes. The proprietor drew the attention of the OD to the non-compliance with its request concerning the AR, cf. § 8.5 and 8.7 of the minutes.
After deliberation within the OD, the chair indicated that the final decision had been reached and that, consequently, the proprietor’s request could no longer be taken into consideration; the OP were then closed, cf. § 8.10 of the minutes, without the proprietor being given the opportunity to be heard on the AR already on the file or to submit any amended requests.
The board held that the right to be heard must be guaranteed throughout the opposition proceedings, including the OP. The proprietor should thus have been heard on the admissibility of new or reorganised AR, irrespective of whether there had been an opportunity to present them previously in the written proceedings.
The board reminded that the right to be heard is a fundamental right that must be safeguarded irrespective of the merits of a party’s arguments. The need to respect it is absolute and therefore cannot depend on a prior assessment of the merits of the party’s arguments.
No change of the composition of the OD
The proprietor’s request to refer the case back to an OD with a different composition cannot be granted. In this respect, the board referred to the CLBA, 10th edition, July 2022, III.J.4.2..
The board held that , in the present case, it does not appear that the SPV would result in the proprietor being exposed to unfair or even biased treatment before an OD sitting with the same composition.
According to the minutes, the chair announced the opinion of the OD that the objection under Art 100(b) was “irreparable” However, it cannot be inferred from this opinion that the members of the OD would not be open to a further assessment once the SPV had been rectified.
Comments
Even if in the opinion of the OD, an objection under Art 100(b) is “irreparable”, this does not allow the OD to ignore AR and to pre-empt a decision on those.
It is interesting to note that actually the chair of the OD stifled any attempt of the proprietor to justify its AR by starting to declare the revocation of the patent. That the proprietor said that it had no further comments on the MR, cf. § 8.4 of the minutes, did not mean that it had nothing to say about the AR, especially since the proprietor wanted to change the order of its AR.
In spite of the production pressure exerted on OD, announcing a final decision of the OD whilst AR have not been properly discussed, should not become a standard way of ending opposition proceedings.
Change of composition of the OD
Unless the OD was not composed as required under Art 19(2), cf. T 466/20, Reasons 7.3, as well as T 251/88, T 939/91, T 476/95, T 825/08, T 2582/11, T 135/12, and T 1788/14, there is no legal basis in the EPC allowing a board to order a change of a composition of the OD. Even if the board would consider that the OD showed a prejudice against one of the parties, it can only suggest a change of composition.
This was not always the case.
In T 611/01, T 433/93, OJ EPO 1997, 509, T 95/04 and T 2362/08, the board remitted with the order to change the composition of the first instance division when the latter committed a SPV.
A long time ago, I took once the liberty to call the chair of a board having ordered such a change of composition after a SPV and asked what was the legal basis of its order. The silence at the other end of the line was astounding.
In this respect, T 2475/17, Reasons 3.2, is the decision to follow, rather than T 2362/08, Reasons 4.4.
In the aleady quoted T 466/20, Reasons 7.5, the board held mere fact that a SPV has been committed does not necessarily mean that there is a prima facie case of bias. If this were to be assumed, it would mean that, in cases of remittal under Art 111(1) and Art 11 RPBA an amended composition would always have to be ordered.
This in turn would contradict the wording of Art 111(1) according to which the default situation is referral of the case to the department of first instance which was responsible for the decision appealed against.
Furthermore, it is also evident from the approach of the EBA that procedural violations do not necessarily have to lead to a change of composition. In cases in which the EBA granted a petition for review under Art 112a EPC on the grounds of a fundamental violation of Art 113, it did not order a change in the composition of the board of appeal in any of these cases, although R 108(3) explicitly provides for this possibility.
For instance in R 5/19, the EBA opined that, in the absence of evidence to the contrary in a specific case, it can be assumed that members of boards will generally fulfil their official duties correctly and, in particular, will continue to examine the case objectively if a decision in proceedings under Art 112a(2,c) is set aside due to a serious violation of the right to be heard.
What is valid for the members of the boards should also be valid for members of first instance divisions.
However in numerous EPC contracting states when a case is remitted back to the instance having taken a decision, higher courts order that it should be dealt with by a court of the previous instance sitting in a different composition. Here Art 125 could come into play.
Art 125 has never been used when remitting a case to a first instance decision, as this would most probably not be in accordance with Art 111(1).
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