Key points
- "On appeal, the patent proprietor argued that the opposition division should not have heard the witness. "
- "Opponent 1 argued that the opposition division's decision to hear the witness could not be contested."
- "Contrary to the view of opponent 1, the board has to examine the patent proprietor's request to review the correctness of this part of the opposition division's decision. An order to take evidence is neither an appealable decision under Article 106(1) EPC nor an interlocutory decision allowing a separate appeal within the meaning of Article 106(2) EPC. Instead, it is a case-management measure that precedes a substantive decision and cannot be reviewed as long as the proceedings are still pending. The review may occur once a substantive decision (in this case the opposition division's interlocutory decision referred to at point I. above) is issued (Case Law of the Boards of Appeal of the EPO, 9th edition, 2019, Chapter V.A.2.2.2 b)(xiii))."
- That paragraph in the CLBA cites just one decision: T 1954/14 (post). That case was an appeal against a summons by the OD to hear a witness. The appeal was rejected as inadmissible. In my view, that is not quite the same as a decision that the decision to summon a witness, can be challenged in appeal.
- Article 106(2) indeed provides that "a decision which does not terminate proceedings as regards one of the parties can (...) be appealed together with the final decision (...)" (omitting the part about leave to appeal), but I'm not sure if this covers a case management "measure" as such (note, the Board does not say "case management decision"). On the other hand, where a case management decision/order/measure results in a substantial procedural violation, this may be a ground for setting aside the substantive decision.
- Assuming for the moment that the Board meant to review the first instance proceedings for an alleged substantial procedural violation, a further issue is that there must both have been a procedural error of the OD, and an adverse effect of that error for the patentee. Harmless errors do not amount to a substantial procedural violation. I'm not sure if hearing a witness as such can adversely affect a party, provided that the parties are given enough time to comment on and rebut the evidence given by the witness.
- The Board also reviewed the substance of the factual findings by the OD regarding the public prior use.
- As a separate issue, if the order to take evidence was an interlocutory decision not including a leave for separate appeal, the present case illustrates that the phrase "only be appealed together with the final decision" in Art.106(2) in fact may mean "may be appealed with the next interlocutory decision that includes a leave to appeal" - in the present case, the proprietor should indeed not have waited for the final decision of the OD to maintain the patent in amended form after the payment of the fee and filing of the translated amended claims of Rule 82.
- On inventive step over the public prior use: "the product of the public prior use would have been available to the skilled person in May 2006. There is nothing that would prevent the skilled person from using a real product, with all its features established above, as the closest prior art."
- "The board fails to see an inventive step in adjusting the moisture content to a range that is conventional in the field of manufacturing pellets and that is not associated with a technical effect."
EPO T 0660/16
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/04/t-066016-review-of-case-management.html
