In its recent decision R 1/13, the Enlarged Board of Appeal rejected the petition for review as clearly unallowable in a case where a Board of Appeal had raised clarity objections for the first time in the course of oral proceedings, and the petitioner had filed new auxiliary requests with a view to reply to these objections. The new requests were however not admitted by the Board. The Enlarged Board found that there was no right of admissibility for requests filed to overcome lateraised objections and that Article 113 (1) EPC did not overrule Article 13 (1) RPBA in the case of such requests. Rather, the right to be heard was safeguarded under these circumstances if the petitioner was afforded an opportunity to comment on the issue of admissibility.

In case T 808/11-3.5.03, the patent proprietor had filed an appeal against the decision of the Opposition Division to maintain the patent in amended form. In the course of oral proceedings before the Board, the Board did not allow the proprietor’s main and first auxiliary requests and, when considering the proprietor’s second auxiliary request, raised a clarity objection against a term that was already present in the claims of the patent as granted and had never been queried before. The proprietor then filed two new auxiliary requests including amendments meant for clarifying that term. Although in the course of a debate on the new requests, the chairman of the Board had indicated that the new requests now appeared to be clear, the Board, after a deliberation, announced that the new requests were not admitted into the proceedings due to a prima facie lack of clarity, dismissed the appeal and closed the proceedings. The patent proprietor then filed a petition for review under Article 112a EPC, in substance based on the argument that by surprisingly not admitting the new requests the Board would be in contravention of Article 113 (1) EPC.

The Enlarged Board considered the following facts as established from the file,

  1. that the Board of Appeal’s objection under Article 84 EPC against claim 1 of the second auxiliary request was raised for the first time during the oral proceedings before the Board;
  2. that the new requests were filed during the oral proceedings in response to that objection; and
  3. that the chairman of the Board remarked that the claims of those newly filed requests appeared to be clear.

However, the Enlarged Board could not find any suggestion in the petition of a denial of the petitioner’s opportunity to present its comments on the admissibility of those requests. Quite the contrary, far from showing a denial of an opportunity to comment, in the Enlarged Board’s view the petition confirmed that the opportunity occurred.

On this basis, the Enlarged Board then rejected the petitioner’s main arguments to the effect that the Board of Appeal did not consider the new requests sufficiently or was obliged to admit the new requests or exercised its discretion incorrectly, each argument being said to demonstrate a violation of Article 113 EPC. The petitioner's first argument was based on the premise that Article 113 EPC enshrined the possibility of a full reaction to overcome any late raised objection and that a prima facie assessment to establish whether a new request was likely to overcome an objection was not adequate to satisfy the right to a thorough discussion under Article 113 EPC of all points at issue. In the Enlarged Board’s view this premise was false. The decision in question here was whether or not to admit the petitioner’s new requests, and the petitioner had and used the opportunity to comment on that issue. The petitioner’s suggestion that the right to be heard carried with it, in the case of requests filed in response to late objections, a right to a full discussion which transcended the requirement of admissibility was simply incorrect. A late objection might lead to more latitude in the filing of requests in response but there was no certainty of admissibility, let alone of a more thorough discussion if admissibility was achieved. The requirement of admissibility for late-filed requests served several purposes – inter alia to ensure the requests offered a prospect of success – and the requirement was not suspended for latecomers, however understandable the lateness of filing their requests might be. If that were not the case, Article 13 RPBA would have little or no purpose.

The petitioner’s second argument, i.e., that Article 113 EPC overruled Article 13 (1) RPBA so that the Board had no discretion in respect of the admissibility of such requests, was considered by the Enlarged Board to be no more than a necessary corollary of the previous argument starting from the false premise of a “right to a thorough discussion”, which would mean that Article 13 RPBA had little or no purpose. It was thus rejected for the same reason.

The petitioner’s third argument that it was responding with new requests to a late objection, that the new requests were not an abuse of procedure and that therefore a prima facie assessment resulting in non-admissibility was also a fundamental violation of the right under Article 113 EPC to react fully to new issues, was again seen by the Enlarged Board to rely on the petitioner’s fallacious view that Article 113 EPC provided a right of full response.

The petitioner’s fourth and final argument was that on the assumption that the Board did have a discretion under Article 13 (1) RPBA not to admit new requests in response to late objections, the Board exercised that discretion in an unduly restrictive manner since pursuant to that Article the new requests could not be considered late and did not introduce any complexity as they attempted to overcome the objection. The state of the proceedings could not apply since the petitioner was responding to a new objection to terms which had been on file since the beginning of the appeal procedure; and procedural economy could not justify the adverse exercise of discretion since that would outweigh the right of the petitioner to defend its case. The Enlarged Board, however, found that this argument again erroneously supposed rights to flow from Article 113 EPC overriding Article 13 RPBA. Furthermore, the petitioner overlooked that Article 13 (1) RPBA stated that the Board’s discretion should be exercised in view of inter alia those criteria. Therefore other considerations could be taken into account, a well-established one of which was whether the claims were likely to overcome the objection raised.

All its previous arguments having been found wholly unconvincing, the only remaining argument deployed by the petitioner to support a denial of opportunity to comment was that the petitioner was surprised by the decision not to admit its new requests because of the remark by the chairman of the Board that the requests appeared to be clear. The Enlarged Board also found this argument unconvincing for various reasons. Firstly, the petitioner and its representatives must have known that the remark was that of one member only and any additional significance they gave it had nothing to do with the proceedings. To seek subsequently to elevate the remark into something more in order to support a petition for review was not merely unconvincing but implausible. Rather, it was apparent that the petitioner conducted its case in reliance on its own assumptions. Hence, only the petitioner and its representatives could be responsible if such assumption proved incorrect and the petition for review procedure was not a remedy for the consequences. Secondly, the chairman of the Board had not actually said that the new requests were admissible. In addition, Article 15 (4) RPBA could not be interpreted to mean that a remark or indication by the chairman had to be relied on by a party without question, let alone that it had the status of a ruling or the removal of a previous objection. Thirdly, the Enlarged Board observed that in accordance with established case law, surprise, while being an understandable subjective reaction of a party which expected to but did not succeed, could not affect an objective review of the decision – so if the petitioner knew the issues which might be raised and had an opportunity to comment thereon, its subsequent surprise was of no relevance.

The petition for review was therefore unanimously rejected as clearly unallowable.

Remarks

The Enlarged Board of Appeal rejected this petition by blaming the petitioner in rather trenchant wording. The decision is not isolated in the Enlarged Board’s recent jurisprudence interpreting the right to be heard pursuant Article 113 EPC narrowly. As apparent from the present case, formal requirements laid down in secondary legal regulations, as the Rules of Procedure of the Boards of Appeal, prevail, thus allowing a Board not to admit new requests filed in response to its own late objections on a provisional assessment of their merits, thereby mixing up issues of admissibility and merits. While it seems acceptable that the Board still has a discretion not to admit any requests into the appeal proceedings as a reaction to late objections, that discretion must be duly exercised, and an evident attempt to overcome those objections, as in the present case, should be stringently subject to full consideration to keep the balance of argument. Furthermore, even if the chairman’s remark is not binding on the Board, it carries particular weight and may well prompt legal expectations.

In this context, it might be useful to recall the finding of Board 3.3.01 in its decision T 892/92 (OJ EPO 1994, 664): “Article 113 (1) provides that the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. If the parties can be said to have been surprised, from an objective point of view, by the decision and the grounds and evidence on which it is based, then this opportunity cannot have been sufficiently granted. In other words, in the Board’s judgment, the term ‘opportunity’ in this article can only be given effective meaning by applying the principle of good faith and the right to a fair hearing.”

One might therefore feel that a proper case management by the Board should aim at identifying the crucial issues at an early stage of the appeal proceedings in order to concentrate the discussion on these issues. If in the eyes of the Board an issue nevertheless only turns out to become decisive at the final oral proceedings, the Board should not hesitate to give the affected party an opportunity for a proper reaction. When a deficiency seems to have been overcome on the basis of the way the oral proceedings are conducted, a party should be informed if and why the Board has come to a different conclusion. The decisive question is not whether the Convention overrules the Rules of Procedure of the Boards of Appeal but whether the Rules of Procedure are interpreted by the Enlarged Board of Appeal so as to avoid surprise decisions as required by the right to be heard.