Key points
- This is the 9th successful petition for review.
- The impugned appeal decision T 2378/13 is set aside.
- The TBA 3.5.02 had - very remarkably - held (in translation) that the opponent as the appellant had submitted with its statement of grounds (in translation) " a variety of different arguments against the inventive step of [operative claim 1]. However, none of these arguments are based on the generally accepted problem-solution approach for assessing inventive step. Consequently, the appellants's allegations concerning the inventive step in writing are disregarded in this decision. During the oral proceedings, before the board, the [opponent/appellant] made attacks using the problem-solution approach, which the board acknowledged." The board found that claim 1 was inventive in view of the considered inventive step attacks.
- The opponent/appellant filed a petition for review.
- The Enlarged Board finds that the underlined part is a surprise decision of the TBA.
- “Damit beruht die Entscheidung auf einem Grund, zu welchem sich die Einsprechende vor deren Kenntnisnahme nicht äußern konnte. Der Grund lautet: Ausführungen ohne Verwendung des Aufgabe-Lösungs-Ansatzes können nicht berücksichtigt werden. ... Der neue Grund war nicht vorhersehbar, da die Beschwerdekammer ihn - wie oben ausgeführt - nie genannt hatte. Die Kammer wäre verpflichtet gewesen, der Antragstellerin vor Erlass der Entscheidung Gelegenheit zur Stellungnahme zu dem Grund zu geben.”
- Although not discussed at all in the present decision, and not explained in T 2378/13 at all, I personally do not exclude that the TBA in T2378/13 was of the view that the opponent was obliged to choose one and only one document as the closest prior art for inventive step and that the Board was of the view that holding the inventive step attacks inadmissible was a proper sanction for the opponent not making such a choice for one and only one CPA document. But let's see what the TBA does after the remittal.
- An important remark about the nature of oral proceedings before the Board: “The respondent took the view that the opponent's representative should have expressly repeated written submissions - that is, the one on inventive step in the grounds of appeal - in the oral proceedings so that they could be taken into account in the board's decision. After he had not done that, an implicit waiver of its consideration can be assumed. This can not be followed. The view that written submissions would have to be repeated at the oral hearing in order to be taken into account would contradict the principle of the written procedure already mentioned in the notice of summons of the Enlarged Board of Appeal mentioned above in the relevant part. This principle arises from the procedural rules for appeal proceedings in the EPC, in particular its Article 108 and Rule 99 (3) in conjunction with Rule 35 (1) and Rule 50 (3), as well as the Rules of Procedure of the Boards of Appeal (VOBK), in particular Articles 12 and 13 thereof 13. Oral proceedings in accordance with Article 15 RPBA usually conclude the procedure.”
- Hence, there is generally no obligation to expressly repeat all arguments made in writing.
- As to the issue of possible waiver of arguments by not repeating them during the hearing: “With regard to the defendant's assumption of an implicit (tacit, implied) waiver of written submissions due to the fact that it was not mentioned at the hearing, strict requirements would have to be made in view of the principle of the written form of the proceedings. An implicit waiver would be conceivable, for example, if statements in writing or during the oral hearing contradict previous written statements. In the event of doubt, it would then be incumbent on the Board to ask questions to clarify which submissions should currently be based on the case. However, there are no indications for this.”
- Hence, not repeating arguments in the oral proceedings is generally no implicit waiver of arguments presented in the written submissions in appeal.
- However, procedurally, any violation of this rule by a Board of Appeal would require a petition for review and there is as far as I know no settled case-law of the EBA that the petition will be successful in such cases.
Translation
Facts and submissions
[The following statements are taken verbatim from Part A of the notice of summons.]
I. The opponent's (applicant) request for review - submitted by a professional representative - is directed against the decision of the Technical Board of Appeal 3.5.02 in appeal case T 2378/13. In this case, the opponent filed an appeal against the interlocutory decision of the opposition division, with which it maintained European patent No. 2 091 029 in amended form on the basis of the main request at the time. The opponent had requested that the contested decision be set aside and the European patent revoked. With the decision under review, the Board of Appeal overturned the decision of the opposition division. She referred the matter back to the opposition division with the order that maintains the patent as amended on the basis of the claims of the new main request of April 1, 2019 and a description that has yet to be adapted.
The decision was announced at the oral hearing on April 1, 2019, and the written decision with reasons for the decision was posted to the parties on April 24, 2019.
The name of the invention is:
Hazard detection with the inclusion of a temperature measuring device integrated in a microcontroller.
source http://justpatentlaw.blogspot.com/2021/09/r-000519-succesful-petition-for-review.html
