CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 618/21 – Art 15a RPBA21 is not in contradiction with G 1/21

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The patent relates to an “Assembly and method for checking rod-shaped articles from the tobacco processing industry”.

Brief outline of the case

The opposition was rejected and the opponent appealed.

Referring to G 1/21, the opponent requested that the OP should not take place in form of a ViCo.

The board decided to hold the OP by ViCo.

In the MR=as granted, claim 1 comprised an intermediate generalisation and infringed the provisions of Art 123(2). The same applied to AR 1 and 2.

AR 0, 0.5 and 3 filed during the OP were not admitted under Art 13(2) RPBA20

The patent was thus revoked.

The request for OP in person from the opponent.

Referring to G 1/21, the opponent requested that the OP should not take place in form of a ViCo but in-person.

The opponent argued as follows

  • In-person OP is the “gold standard” in matters of OP. It could only be deviated from this “gold standard” in exceptional cases.
  • Decision G1/21 clarifies that OP may only be conducted as a ViCo against the will of the parties in the event of a general emergency.
  • Art 15a RPBA21 cannot call this principle into question, which is why the board’s discretion granted by Art 15a(1) RPBA21 cannot go beyond the provisions of G1/21.
  • Should the board or one of the parties wish to deviate from the “gold standard”, it was up to the board to justify why the OP should not be held in person. In contrast, a request to conduct the OP in person does not have to be justified.
  • Accordingly, since the end of the COVID19 pandemic meant that there was no longer a general emergency, OP could only be held by ViCo if all parties agreed, which was not the case here.
  • Without further specification of the principles of the exercise of discretion in Art 15a RPBA21, ex officio decisions on the form of OP are arbitrary. This, however, contradicts the principle of a fair administration of justice.

Should the board not change the format of the OP, the opponent also requested the board to refer questions of law to the EBA.

These questions can be summarised as follows:

  1. Is the discretion conferred by Article 15a(1) RPBA21 compatible with the legal finding in paragraph 48 of decision G 1/21 that the party requesting OP may choose the format and must the said discretion be exercised having regard to the legal assessments set out in paragraphs 38, 39 and 48 to 50 of G 1/21 by the EBA?”.
  2. Question 2 is a mere repetition of question 1 and can be ignored.
  3. If the answer to 1 is yes, according to which criteria is the discretion to be exercised under Art 15a(1) RPBA21?”

For the opponent, the submission of the questions of law was imperative, as the board’s decision to hold the OP by ViCo was against the opponent’s wishes and would violate the principles of decision G1/21. However, a deviation from the principles established by the EBA required the latter to take a new decision.

The opponent also argued that the board was not an independent tribunal in the meaning of Art 6 ECHR because the members of the board are dependent on the goodwill of the President of the BA when they are reappointed every five years. However, since the President of the BA is in favour of videoconferencing, it is to be expected that the boards will uncritically follow this requirement.

The boards position with respect to OP by ViCo vs. OP in person

The discretionary power of the board to decide the form of the OP

For the board, Art 15a RPBA21 gives the board discretion in deciding to hold the OP by ViCo of its own volition, if necessary also against the will of the parties. The decisive criterion is “suitability/expediency” which can however also be translated by “convenience”.

The criterion “suitability/expediency/convenience” implies that the format OP by ViCo is in principle suitable for achieving the purpose of the OP and that it also appears to be “pertinent/relevant“.

The criterion “suitability/expediency/convenience” forms an absolute barrier and excludes formats of the proceedings that are unsuitable for the specific intended purpose; “unsuitable/not expedient/not convenient” formats are always inappropriate.

The criterion “relevance/pertinence” requires a balancing of overall consideration of all aspects that play a role in connection with the planning and conduct of OP before a BA and that make the format chosen for this purpose appear more or less relevant/pertinent for achieving the purpose of the proceedings.

The balancing should be based primarily on objective considerations. The subjective assessments /perceptions of the parties may play a supplementary role; they carry all the more weight the more the perceptions are supported by objectifiable arguments put forward by the parties. It cannot be ruled out that there may be several appropriate formats side by side.

No contradiction with G 1/21

The board also held that the provisions of Art 15a RPBA21 do not contradict higher-ranking law or the main conclusions of the Enlarged Board of Appeal in decision G1/21.

A new line of arguments not found in G 1/21

The board further considered that OP by ViCo allows the parties to participate in the OP from their regular place of work. This avoids the need to travel to and from the BA’s premises.

This allows the parties to spend the travel time that would otherwise be required more wisely. It also allows the parties to save the costs of travel and any necessary overnight accommodation. It can also prevent the means of transport used for the journey from causing environmental damage. Furthermore, unnecessary CO2 emissions can also be prevented.

OP by ViCo and Art 6 ECHR – Independence of the boards

The board further added that in its opinion holding an OP by ViCo does not violate Article 6 ECHR.

Article 6 ECHR requires a fair trial before an independent and impartial tribunal.

The EBA found in G1/21, cf. grounds 40, that OP by ViCo is to be considered a fair trial.

The board noted that the independence of the boards is governed by Art 23(3) EPC, according to which the members of the boards are not bound by instructions of third parties in their but are only subject to the EPC.

Moreover, the Board is not aware of any public or internal request by the President of the BA instructing the boards to give preference to OP by ViCo or even to schedule OP by ViCo whenever possible. The opponent was unable to prove any such instruction or influence.

The opponent’s assertion that the board is not independent thus remains an unproven assumption.

Rejection of the referral

One of the reasons for the board to reject the referral to the EBA was the absence of any contradictory application of the law. The opponent was also unable to produce any judgements of other boards which fundamentally contradicted the present legal opinion, despite being asked by the board during the OP.

The question as to which criteria the boards may apply in exercising their discretion pursuant to Art 15a RPBA21 cannot be answered in absolute terms, but depends on the specific individual case. Therefore, the EBA cannot give a conclusive answer applicable to all cases, but case law will crystallise various criteria and their application in a multitude of different constellations in the coming years. The present decision follows this path and attempts to identify and structure the criteria for the exercise of discretion relevant to the present case from the perspective of the board.

Equivalence of OP by ViCo and in-person OP

Last but not least, the board considered that due to the technical developments that have occurred in the meantime and the greater experience of all parties involved, OP by ViCo can in most cases now be regarded as an almost equivalent alternative to a in-person OP. However, specific circumstances of the individual case may mean that the format of the videoconference is either already unsuitable or, in an overall assessment, appears to be at least so irrelevant that the appropriateness required under Art 15a RPBA21 is lacking.


Opening note

The present decision is one more in a series of decisions of BA 3.2.01, or at least from the same chair and rapporteur, but with a different legal member. It can be considered that BA 3.2.01 continues its crusade for OP by ViCo and against in-person OP defined as “gold standard” in G 1/21. See T 758/20, commented in this blog, T 1158/20, also commented in this blog.

Discretion of the board

That Art 15a(1) RPBA21 does not specify any mandatory points that must be taken into account when exercising discretion, does not mean that the board can decide on its own volition what is more convenient for it.

The board acknowledged that in the proceedings, no aspects were presented, that would have made either OP by ViCo or in-person OP appear unsuitable. It follows logically that the choice of the form of OP should have been left to the parties and was dictated solely by the convenience of the board.

To claim that the provisions of Art 15a(1) RPBA21 do not contradict higher-ranking law or the main conclusions of the EBA in G1/21 is simply ludicrous. If the conclusions of the EBA in G1/21 are of a higher ranking, which is accepted by the board in its decision, why does the board not follow those? If the board intends to deviate from G 1/21, it should at least abide by the provisions of Art 21 RPBA21.

That the question of compatibility of the considerations in G 1/21, “gold standard” in-person OP, with the discretion given to the boards about the format of OP in Art 15a(1) RPBA21 would become determining was foreseeable. I commented a few times about this question, see above here.

As far as “suitability/expediency” is concerned, it is difficult to see why and how OP by ViCo would be more “suitable/expedient” than OP in person. It seems that the predominant aspect for, at least this board, to lie more in the “convenience” it offers to the board. It is certainly more convenient to have an OP by ViCo as it does not oblige the members of the board to sit together in the same room.

Although Art 15a(3) RPBA21 allows the members of a BA not to sit together when deciding upon the fate of an application/patent, I fail to see a legal basis in the EPC for this way of holding OP.

Sustainability and OP by ViCo

Now the pretext of a possible contamination by the COVID virus is not any longer available, holding OP by ViCo has to be justified at any rate.

It is touching to note that in the absence of a possible contamination by the COVID virus, the board is now concerned with the environment and the sustainability.

The argument of sustainability has undoubtedly some value, but it should be left to the parties to decide what form of OP they find better for defending their case. It is also to be noted that G 1/21 does not contain any reference to sustainability.

It is neither for a board in particular nor for the EPO in general to decide upon the form of OP.

If all parties agree to OP by ViCo, then there is no reason to oppose this form of OP. I would nevertheless add, that the board should sit together in its premises. In the present case, the opponent was against OP by ViCo, whereas the proprietor was more open to this form of OP. The board should thus have offered a mixed mode OP.

Whether it was wise from the side of the opponent to come up with the problem of independence of the board will be left aside.

In the preparation of the OP in G 1/21, it remains a matter of fact that, in an interlocutory decision of the EBA, in an alternate composition, the EBA decided to replace the President of the BA by another legal member. The second legal member, now chair of the Legal BA, withdrew himself as it was well known that he was also in favour of OP by ViCo.

The transfer of the BA to Haar was carried out in order to “increase the perception of independence of the BA”. Whether the boards are really independent or not will not be discussed here.

Chronology of events

When the board claims that Art 15a RPBA21 also regulates non-emergency situations which were deliberately left out by the Enlarged Board of Appeal in G1/21, and has codified the discretion given to the boards, it has manifestly overlooked the actual chronology of events. “Suitable/expedient” in the sense of G 1/21 can also be equated with “convenient” for the board.  

Art 15a RPBA21 was approved by decision of the Administrative Council CA/D 3/21 of 23.03.2021 (OJ EPO 2021, A19) and entered into force from 01.04.2021. The actual OP in G 1/21 took place on 02.07. 2021 and the order was issued on 16.07.2021. The reasons for the decision with the notion of “gold-standard” for in-person OP were issued much later in 2021. It is difficult to see how a decision from March 2023 codifies and regulates situations only discussed in July 2023 and decided much later.

Dismissal of the referral to the EBA

When the board asserts the absence of any contradictory application of the law, it is giving a biased view. There might not be contradictory decisions of the boards, but even the present board accepted in-person OP.

 In T 2303/19, commented on this blog, the board refused to hold OP by ViCo as requested by the proprietor. The OP took place at the premises of the EPO on 07.12.2022.

In T 996/20, with the same chair and rapporteur, in-person OP were held on 02.11.2021, whereas in T 1158/20 held on 22.11.2022 and in T 758/20 held on 23.11.2022, in in-person OP was refused.

The conclusion that the form of OP is depending on the convenience of the board is difficult to dismiss.

Equivalence of OP by ViCo and in-person OP

The present board actually reiterates its position taken in T 1158/20 that OP by ViCo is now equivalent to in-person OP. By merely repeating this stance, it does not become more convincing.

This is the more so as the present board wilfully ignores the provisions of Art 21 RPBA21: “Should a Board consider it necessary to deviate from an interpretation or explanation of the Convention contained in an earlier decision or opinion of the EBA, the question shall be referred to the Enlarged Board of Appeal.  

Possible referral to the EBA

To sum it up, it could be envisageable to have a decision of the EBA in order to clarify the situation with respect to the discretion of the boards according to Art 15a(1) RPBA21 in view of G 1/21.

I am however not sure that it would not be taken as a good opportunity to get read of the notion of in-person OP as “gold standard”.

However as long as the “gold-standard” exists, it is not for a board to decide that it can be thrown overboard for the benefit of the convenience of some boards.

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4 replies on “T 618/21 – Art 15a RPBA21 is not in contradiction with G 1/21”

francis hagelsays:

It is objectionable that a BOA may feel entitled to challenge the EBA’ s interpretation of the RPBA or declare it outdated, and assert in effect that its requirement for Vico proceedings can be entirely discretionary. This decision distorts the much praised notion of « independence » of the BOAs to « independence vis-à-vis the EBA ». And that demonstrates a worrying lack of authority of the EBA, and the limits of the EPO’s governance mechanism.

What can be the way out ?

The BOA’s assertion of its discretionary power to impose Vico proceedings against the will of a party is arguably a strong violation of the procedural rights of that party. A party should be entitled to challenge the assignment of their case to a specific BOA when that BOA is known from previous decisions for asserting discretionary power as to Vico proceedings.

This is just a matter of principle, the implementation of such challenge would be another story.

Avatar photoDaniel X. Thomassays:

Mr Hagel,

The main problem is indeed that the present board, by alleging that OP by ViCo are equivalent to in-person OP, plainly disregards the reasons of G 1/21 and superbly ignores the provisions of Art 21RPBA21.

Whether it would bring anything to allege partiality of the board under Art 24(3) in view of other decisions of the same board and of the same kind is debatable. The same board accepted in-person OP at the beginning of November 2022, but not at the end of the same month. The difference in treatment can at best be considered arbitrary. But it is a question of appreciation by the alternate board whether this arbitrary behaviour is to be equated with partiality. Doubts are permitted.

It appears to me, that it is more a matter of convenience for the board, whether the board decides for OP by ViCo by introducing a further requirement: the party requesting in-person OP has to show that the case in not appropriate for OP by ViCo. This is however not what is said in the reasons of G 1/21. It is only if parties are impaired in their access to the premises of the EPO that this question is legitimate.

One possible way to tackle the problem would be to challenge the legality of Art 15a(3)RPBA21 allowing the members of the BA not to sit together when deciding upon the fate of an application or a patent. I fail to see for this any legal basis in the EPC. That question has never been referred to the EBA. In view of the president’s position in matters of ViCo, more than reasonable doubts are permitted, that he would ever refer a corresponding question to the EBA.

Such a referral could thus only come from a board. Here as well, reasonable doubts are permitted in view of the fact that the president of the BA is manifestly so much in favour of OP by ViCo that other members had to remove him from the EBA in case G 1/21.

Alessandro Cossusays:

Dear Daniel, I would suggest having a look at the decision T 2432/19, as soon as it is published: at last, something reasonable and in keeping with the rule of law.

Avatar photoDaniel X. Thomassays:

Dear Alessandro,

Thanks for the information.

T 2432/19 has just been published (09.05.2023) and i am preparing a publication in the blog. It looks indeed very interesting. Be it only for the Catchword, it says a lot.

As mentioned in the comments, in T 2309/19. also commented on this blog, the board refused to hold OP by ViCo in spite of the corresponding request of the proprietor.

The Board agreed with the opponent that at the relevant time there were no Covid-19 related travel restrictions which would impair the parties’ possibilities to attend in person OP at the EPO premises, and that in person OP were for now the optimum format as expressed in G 1/21.

This board did not venture in a “dynamic interpretation” of G 1/21. It took G 1/21 to heart.

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