Brief outline of the case
The opponent appealed the decision of the OD to maintain the patent in amended form.
The opponent argued lack of sufficiency and lack of IS.
Some objections only raised in appeal were not admitted by the board.
At the end of the OP before the board, the appeal was dismissed.
Violation of the right to be heard?
The opponent claimed that its right to be heard was violated by the OD
In the framework of the objection of lack of sufficiency, the opponent criticised in the written and oral proceedings before the OD that the feature “similar airfoils” could not be carried out.
According to the opponent the question in regard to which property airfoils had to be similar was not even answered, neither by the proprietor nor by the OD in the written decision, the latter consequently infringing the opponent’s right to be heard.
For the opponent, the right to be heard required that the OD should have considered this question, which they had failed to do by not answering it.
The board’s position
For the board, the opponent’s right to be heard was not violated by the OD not answering the question raised in the oral proceedings as to whether the similarity of an airfoil referred to the material or the shape.
The board held that there is no requirement for an OD to answer such a question from a party. The party is there to provide its arguments on a case and the OD is there to decide on the arguments, albeit in certain cases the OD may choose of its own motion to inform the parties how it understands particular wording of a claim.
The Board accepted that a party’s right to be heard requires a consideration of its arguments which should then be reflected in the written reasoning, cf. Art 113(1) in conjunction with R 111(2).
The board considered that the impugned decision and the minutes contain some inconsistencies on the issues raised by the appellant under Art 83 against the then considered MR underlying the impugned decision.
The impugned decision indeed lacks any mention of the particular issue questioned by the appellant in the second paragraph of item 3.1.1 of the minutes about “similar airfoils” referring to material or shape?
The Board, nevertheless saw no reason why the OD was required to provide a concrete answer on the question recorded in the minutes. Assuming for the sake of argument that the contested terminology would have been considered unclear by the opposition division, the crucial question to be answered by the division under Art 83 would then have been why the claimed invention could still be considered to be disclosed in a manner sufficiently clear and complete in the patent, rather than which property was relevant.
In regard to such a crucial question it would indeed have been incumbent on the OD to take into account the opponent’s arguments possibly substantiating why the skilled person was allegedly unable to provide “similar airfoils” and to at least briefly reply to such arguments in the written reasoning.
However, the opponent made no arguments in this respect. At least the minutes do not record any particular argument submitted by the appellant except for the mentioned question.
Having regard to other details of the arguments submitted by the parties during the OP and recorded in the minutes it is not apparent that the minutes are incomplete in this regard, nor has it been argued by the opponent that this was the case; a request for correction of the minutes of the oral proceedings before the OD is also not on file.
As regards arguments allegedly submitted in writing during the opposition procedure in this specific regard, the opponent did not reply to the Board’s remark on the generality of the respective statement in the grounds of appeal.
In summary, the board concluded that the lack of a concrete answer to the appellant’s question did not constitute a violation of its right to be heard under Art 113(1).
Questions to the other party or the division
It is not part of the argumentation of a party to put questions to the other party or the deciding body, here the OD.
It does not arrive often, but from time to time an exasperated opponent asks the following question: if the subject-matter of a given claim is novel, then the proprietor or the OD should explain why it then is inventive.
As in opposition the onus of proof lies with the opponent, such a question is not even admissible.
It can also happen that after the OD concluded to the novelty of a claim, the opponent wants to know which feature was giving novelty and why. The opponent generally considers a reply to this question as being absolutely necessary in order to better argue inventive step.
As such this is a legitimate aim, but if the opponent has properly followed the discussion on novelty he should be well aware of the feature(s) which made the claim novel over the PA. In order for the right to be heard under Art 113(1) to be respected, the feature(s) will have been subject to the discussion. Such a question is thus merely superfluous and does not deserve an answer.
What is however required is that the arguments brought forward by the parties are properly reflected in the decision and the minutes.
Minutes and substantial procedural violation (SPV).
As far as the minutes and the decision of an OD are concerned, it goes without saying that they should be in concordance.
On the basis of the minutes the boards can decide whether or not a division of first instance has committed a SPV.
When a party claims that a first instance division, ED or OD, committed a substantial procedural violation during OP, the boards check the content of the minutes of the OP against the statement of the appellant.
A party considering that the minutes do not properly reflect the way the OP went along can file a request for correction of the minutes. The deciding body can accept the requested correction, totally or in part, but can also refuse it, see below.
This is the case here in which the board concluded to the absence of a SPV.
In T 68/16, the board reached the conclusion that it has not been established that the failure to take into account an inventive step argument based on D17 constitutes a SPV.
In T 2064/17, it cannot be inferred from the minutes, in particular from the section “Sufficiency” that a request was ever filed as to the admissibility of the hearing of the opponent’s accompanying person.
In other cases, the board concluded to a SPV.
In T 405/12 it is not possible to know either from the decision or from the minutes which requests have been discussed and decided upon. The OD thus committed a SPV.
In T 68/16 (op cit.), the OD appears not to have taken account of the assertion of the appellant/opponent that the “assumed” technical effect was not obtained over the whole claimed range and committed a SPV.
In T 136/16, it is not discernible from the minutes that the appellant/opponent was given any opportunity at all to present the relevant objections at least to the extent that the OD and the respondent/proprietor could have assessed their prima facie relevance.
In T 68/16, it was not clear from the minutes, whether, after the discussion of inventive step over D16, the OD has offered the opponent an opportunity to make further comments on inventive step.
Request for correction/amendment of the minutes
It should be noted that the refusal of the request for correction of the minutes by the competent department before which OP has been held is not considered an appealable decision within the meaning of Art 106(1) as it is not part of the original decision of the competent department of the EPO.
In T 2256/13, on the same day the opponent filed the appeal he filed another letter, requesting the EPO to correct the minutes of the OP and the decision of the OD. The OD refused these requests.
The board reminded that neither the content of the minutes of the OP before the OD nor the decision refusing to correct them form part of the decision rejecting the opposition.
Therefore, it is not within the competence of the board to correct the minutes of the OP before the OD and the request to perform such a correction must be rejected.
The same applies to the request for correction of the decision. A board can endorse the decision of the OD or set it aside, but it cannot amend it.
The board also concluded to the absence of a procedural violation by the OD.
A separate appeal can be filed against the decision refusing the correction of the minutes. Since the boards do not have the power to order a first instance deciding body to amend the minutes for the simple reason that they were not present at the OP before the first instance, the usefulness of an OP on this topic and a following appeal is debatable.
For the rest, a request for correction of the minutes can only be submitted to the instance before which the OP took place, cf. T 1481/19.
A request for correction, with a proposed correction, should be filed as soon as possible after receipt of the minutes in question.
In T 1679/17 the board held that according to the established case law, the parties and their representatives are expected to carefully examine the content of the minutes, in particular their completeness and correctness, immediately after receipt and, if necessary, to object to them promptly
In response to a request for correction the Division will either issue corrected minutes of the OP or dispatch a communication stating that the minutes already contain the essentials of the OP and the relevant statements of the parties and give reasons for its conclusion.
If a party considers that its right to be heard has been violated by a first instance division and this is not apparent from the minutes, it is imperative to request as soon as possible a correction of the minutes. As the board was not present it cannot decide whether the minutes are correct or not.
In the present case one of the reasons for the board to conclude to the absence of a SPV was the absence of a request for correction.
In T 417/18, the board held that in view of the minutes and the absence of a request for correction the the only possible conclusion was that the right to be heard of the opponent had been respected.
This should not be taken as an encouragement to systematically query the minutes of OP.
It is worth remembering that in inter-partes proceedings the other party has often a totally different recollection of the OP than the party requesting correction of the minutes! As the board was not present, it will draw its own conclusions. In any case it cannot order an amendment of the minutes.
Experience shows that a request to correct the minutes is rarely granted by first instance divisions. It is even rarer before the boards.