R 0009/10 (Fundamental violation of Article 113 EPC/SONY) 10-09-2010

I. The petition for review concerns the decision T 893/07 of Board of Appeal 3.4.01, announced at the end of oral proceedings on 11 February 2010 and notified in writing on 1 April 2010, to dismiss the appeal against the decision of the Examining Division of 5 December 2006 to refuse European patent application No. 04291741.9 (published under No. 1496564) entitled "Diversity antenna system". The petitioner was the applicant and appellant. The Examining Division had refused the patent application on the grounds of added subject-matter, lack of novelty and lack of inventive step.

II. The petition for review was both dated and filed on-line on 11 June 2010 and the petition fee was paid on the same date. The only ground relied on in the petition was Article 112a(2)(c) EPC, an alleged fundamental violation of the right to be heard under Article 113 EPC.

III. The petitioner's arguments can be summarised as follows.

Admissibility

The written notification of the Board of Appeal's decision was dated 1 April 2010 and so deemed to be notified on 11 April 2010 under Rule 126(2) EPC. Thus the petition was filed within the two month time limit in Article 112a(4) EPC on 11 June 2010. As regards the obligation to raise objections under Rule 1O6 EPC, at the oral proceedings held on 11 February 2010 the petitioner's professional representative objected that, in the circumstances of the present case, the petitioner's right to be heard required the Board of Appeal to remit the case to the Examining Division, i.e. that refusal to remit breached the applicant's right to be heard. Thus an objection was indeed raised against the violation of Article 113 EPC during the appeal proceedings. The Board of Appeal ignored this objection and refused to remit the case to the Examining Division, as evidenced by its written decision.

Allowability

The Board of Appeal's decision to refuse the appeal on the basis of a document cited for the first time on appeal, without remitting the case to the Examining Division for further examination, was a fundamental violation of Article 113 EPC.

1 - Summary of proceedings

The European patent application was filed on 8 July 2004. The search report dated 30 August 2004 cited D1 against all the claims and D2 against claims 6 and 7. A communication issued by the Examining Division on 26 September 2005 raised objections of lack of novelty and inventive step over D1 and lack of clarity of the independent claims. On 26 January 2006 the petitioner filed a new set of claims, a suitably adapted description, supporting arguments and a precautionary request for oral proceedings. On 21 July 2006 the Examining Division issued a summons to oral proceedings, set a final deadline of 17 October 2006 for written submissions and raised an objection under Article 123(2) EPC to claim 1 as filed on 26 January 2006. On 16 October 2006 the applicant submitted an amended version of claim 1 and further arguments, withdrew the request for oral proceedings and requested a decision on the state of the file. The oral proceedings were held nevertheless on 17 November 2006 at which the decision to refuse the application was made. The grounds in the written decision dated 6 December 2006 were that claims 1 to 4 lacked novelty over Dl, claim 5 lacked inventive step over Dl and common general knowledge, and the amended claims filed on 16 October 2006 contravened Article 123(2) EPC.

The petitioner filed a Notice of Appeal on 18 January 2007 and Grounds of Appeal on 13 April 2007 which included amendments intended to overcome all the objections raised in the decision under appeal. For this reason interlocutory revision and resumption of examination proceedings could have been expected but did not occur which could have been a substantial procedural violation. On 12 November 2009 the Board of Appeal summoned oral proceedings to be held on 11 February 2010. In a communication dated 4 December 2009, the Board acknowledged the novelty of the invention over the prior art previously cited but presented numerous and complex new objections relating to the amended claims including six clarity objections, three new objections under Article 123(2) EPC, a new objection that claim 1 lacked inventive step over D2, and a new objection that claim 1 lacked novelty over a new document D3 which had not been cited before. Thus after two and a half years of inaction and only ten weeks before the oral proceedings, the petitioner was faced with a new case to defend.

On 11 January 2010 the petitioner filed further amended claims to overcome the new objections. At the oral proceedings the petitioner's professional representative submitted various arguments which the Board accepted as overcoming the objections raised in both the decision under appeal and its own communication. However, the Board raised a new objection at the oral proceedings that the amended claims lacked inventive step over D3. The representative argued that the case should be remitted to the first instance to consider this objection and remittal thus became the main issue. The petition relied on the Board's summary of its arguments for remittal at point 3.1 of its decision:

"3.1 The appellant's representative reminded the Board that the summons to attend oral proceedings before the examining division had been issued after a single communication of the examining division and that, as a consequence, the appellant/applicant had had only limited opportunities to defend his case before the first instance department. She further emphasized that the current request remedied all objections relied upon by the examining division in its refusal and that the jurisprudence of the boards of appeal implied, in such situations, that the case be remitted back to the examining division in order to ensure that the applicant had the benefit of two instances. In support of this view, reference was made inter alia to decisions of the boards of appeal T 180/95, T 47/90 and T 139/87. Finally, the appellant stressed that the document reflecting the closest prior art had been introduced ex officio by the Board of Appeal for the first time into the proceedings in the annex to the summons to attend oral proceedings before the Board.

In conclusion, the appellant's representative held that the balance between conflicting principles such as, on the one hand, the right of the appellant to be heard and, on the other hand, the right of the public to have a fair knowledge of the rights resulting from a patent application within a reasonable period of time was on the side of the appellant." (Emphasis added by the Enlarged Board to indicate text omitted, presumably unintentionally, by the petitioner.)

The Board of Appeal rejected these arguments for the following reasons. Issuing a single official communication during examination proceedings was not convincing evidence of a lack of sufficient opportunity for the petitioner to defend its position. Document D3, introduced by the Board of Appeal ten weeks before oral proceedings, was a family member of a document cited in parallel proceedings in the USA so the petitioner "could not be considered unprepared to the introduction of D3 into the appeal proceedings" (see the decision, Reasons, point 3.2). There was more jurisprudence on remittal than that cited by the petitioner: T 111/98 decided that "Amendment of the claims in response to the citation of a new document is not as such a sufficient reason to remit the case to the department of first instance". The Board then based its summary entirely on reasoning from T 111/98:

"In view of this decision, what actually appears to be essential when a board exercises its discretion to remit a case is whether the factual framework has substantially changed during the appeal proceedings" (see Reasons, point 3.2 of the decision, emphasis added by the petitioner).

At the end of the oral proceedings the Board, in the light of T 111/98, refused to remit the case to the Examining Division, decided that the invention lacked inventive step having regard to D3, and dismissed the appeal.

The petitioner's reasons for asserting that the decision under review should be set aside were that:

1) it mis-interprets the extent of the right to be heard provided by Article 113 EPC by following decision T 111/98 which is inherently flawed, and/or

2) it unfairly restricts the applicant's right to be heard provided by Article 113 EPC

a) by not considering the balance between different legal factors and decisions relevant to a decision on remittal to the first instance in the circumstances of the present case, and

b) by incorrectly applying T 111/98, notably by failing to consider whether the present case corresponded to the first of the two "exceptions" specified in T 111/98 for allowing remittal to the first instance when a new document is introduced into proceedings on appeal.

2 - Petitioner's view of the right to be heard

In order for Article 113 EPC to fulfil its intended purpose, the right to be heard must provide a party with both notice of the legal argument or objection advanced against it and a real and effective possibility to reply. The approach adopted by the Board in the present case recognises the need for notice of the objection but considers only one occasion for a response of some kind will satisfy the right to be heard. That is overly formalistic - Article 113 EPC requires not just a possibility to present some kind of case but a real and effective opportunity to obtain and present arguments which properly reflect the merits of the case.

Factors which affect what is required to provide such a real and effective opportunity depend on the circumstances of the particular case but include the specific nature of the legal arguments advanced against a party, the complexity and number of those arguments, and further arguments presented in response to its case especially during oral proceedings. It may be necessary to gather and/or properly organize evidence, conduct experiments, locate suitable witnesses, analyse the case, determine an appropriate defence, and present arguments. Moreover, in all cases, a certain minimum time is required to obtain advice, take strategic decisions and instruct representatives.

3 - Mis-interpretation of the extent of the right to be heard by following T 111/98

Decision T 111/98, which provided the main reason for the Board to refuse remittal in the present case (see the citation from point 3.1 of its decision above), is flawed and should not be followed, notably because it unduly restricts the right of parties to be heard. T 111/98 considered (see Reasons, point 1.2) the question whether the introduction of a new document into appeal proceedings — changing the factual framework of the case after delivery of the decision under appeal — requires or justifies a remittal of the case to the first instance. It concluded:

a) Article 111(1) EPC provides a Board of Appeal with the discretion to "exercise any power within the competence of the department which was responsible for the decision appealed" or to "remit the case to that department for further prosecution."

b) The provision of a discretionary power would make no sense if the boards were ipso facto obliged to remit the case whenever new matter was raised in appeal proceedings, irrespective of the nature of such matter.

c) Thus, in accordance with T 557/94 and T 966/95, Article 111 EPC confers on a Board of Appeal the power to act inter alia as the first and only instance in deciding upon a case taking into account a document first filed in appeal proceedings, without the possibility of further appellate review.

The reasoning in (b) and (c) is flawed in logic and in law.

As regards point (b), the provision of a discretionary power "makes no sense" only if there are no circumstances under which this power could be exercised by the Board of Appeal. However, there are many different circumstances in which Boards of Appeal are free to exercise unfettered discretion regarding remittal or non-remittal of cases to first instance when new matter is raised — new arguments or grounds of objection, new experimental evidence, amendments of claims. The Board in T 111/98 was concerned only with the specific case of remittal when the "new matter" was a new document introduced on appeal. Thus the justification - based on "making sense" of the discretion - for a Board of Appeal to act as the first and only instance in such a case was not made out. It not only makes sense, but is a correct interpretation of the law, for the discretionary power provided by Article 111(1) EPC to remit (or not) a case to the first instance to exist yet to be subject to obligations on the Board of Appeal to remit cases in certain circumstances where overriding considerations — for example the applicant's need for two instances to ensure a correct respect of his right to be heard - determine that this is just and appropriate.

As regards point (c), as well as being based on the flawed reasoning in (b), this was said to be in conformity with T 557/94 and T 966/95. T 966/95 was a decision of the same Board as issued T 111/98 and, as regards remittal, is in substantially identical terms so cannot be considered an independent endorsement of T 111/98. Although in T 557/94 a different Board rejected an argument for remittal based on Article 32 TRIPS, it did not endorse a generalized approach of Boards of Appeal acting as a first and only instance. Indeed, it said (see Reasons, point 1.2):

"Quite a different matter is whether the rights of the parties to fair proceedings are impaired if a new document is first introduced in appeal proceedings. The case law of the boards of appeal of the EPO calls for careful consideration when such a procedural situation arises".

Although the Board in T 557/94 declined to remit despite a new document, this was probably influenced by the fact that non-remittal would not disadvantage the patentee because the Board was inclined to maintain the patent even in the face of the new document. Thus, T 557/94 does not provide the support claimed for it by T 111/98.

4 - Failure to balance different factors

T 111/98 is not the only decision which deals with remittal of cases to the first instance, or even the only such decision relating to remittal in cases where new documents are cited on appeal. Historically, EPO jurisprudence on this issue tends to favour remittal in cases where a new document is cited on appeal: see, for example, T 28/81, T 147/84, T 258/84, T 273/84, T 170/86, T 198/87, T 205/87, T 215/88 and T 611/90. Indeed, the Board of Appeal cited T 111/98 to show that the jurisprudence regarding remittal if a new document is filed on appeal was not unanimous (see Reasons, point 3.2). However, despite the different points of view expressed in different decisions, the Board declined to weigh up the balance of legal factors but merely followed the approach in T 111/98 and thereby erred in law. In particular, it did not take into account whether the petitioner's right to be heard was sufficiently respected by a decision at a single instance.

The Board of Appeal in T 111/98 had to consider in inter partes proceedings whether the admission of a new document on appeal should lead to remittal when the relevant document had been cited more than two years before the oral proceedings. In the present case the Board made much of the fact that the new document introduced ten weeks before the oral proceedings had an equivalent which had been cited in separate proceedings on a parallel patent application in another jurisdiction. That cannot discharge the Board from its duty to give a party a proper opportunity to respond to the objections and arguments based on that document especially since they are entirely independent of any arguments that may have been used in the other jurisdiction.

5 - Omission to consider one "exception" in T 111/98

The Board of Appeal's decision stated (see Reasons, point 3.2):

"Furthermore, the Board notes that, contrary to the view defended by the appellant, the jurisprudence of the boards of appeal is not unanimous when deciding on the possible remittal of a case to the department of first instance. As for instance stressed in decision T 111/98, remittal depends on the circumstances of the case. In particular, "Amendment of the claims in response to the citation of new document during appeal proceedings is not as such a sufficient reason to remit the case to the department of first instance" (cf. T 111/98, head note; Reasons, point 1.2). In view of this decision what actually appears to be essential when a board exercises its discretion to remit a case is whether the factual framework has substantially changed during the appeal proceedings. In the Board's judgement, the introduction of D3 into the present appeal proceedings does not, however, amount to a substantial change in the factual framework."

Decision T 111/98 (see Reasons, point 1.2) said:

"In the Board's view remittal, due to the admission of a new document, should therefore rather be an exception e.g. if, without remittal, a party would not have had sufficient opportunity to defend itself against an attack based on a new document, or if the factual framework has changed to such an extent that the case is no longer comparable with the one decided by the first instance."

In the decision under review, the Board of Appeal considered only the question of whether the current case corresponded to the second of those "exceptions". It did not consider whether or not the current case corresponded to the first of the two exceptions - which also corresponds specifically to the question of whether or not a party's right to be heard has been properly respected. This was a misapplication of decision T 111/98. If for no other reason, it is appropriate to re-open the appeal proceedings to give proper consideration to this.

If the Enlarged Board of Appeal agrees to re-open this case for this reason, it would be helpful if it could also confirm the correct principles to be applied by the Board of Appeal when deciding whether or not the applicant has had "sufficient opportunity to defend itself against an attack based on a new document". The petitioner believes the proper principles to be those it summarized (see section III.2 above). If those principles are applied to the present case, it will be realized that the applicant has not been given a real and effective possibility to present its case, particularly in view of the fact that the actual objection which led the Board to reject the present appeal was raised for the first time during the oral proceedings.

IV. The petition requested (by implication) that the Enlarged Board of Appeal set aside the decision of 11 February 2010 and re-open the appeal proceedings. There was no request for oral proceedings.