Key points
- The Board in the headnote: "The burden of proof regarding the facts, arguments and evidence on the substance (which initially lies with the opponent) does not shift to the proprietor just because the patent has been revoked due to an alleged insufficient disclosure."
- My analysis is as follows.
- A decision of an opposition division consists of conclusions in law, findings of fact, and inferences about what the skilled person would do.
- Both the appellant and the respondent may wish to contest one or more of the conclusions and findings in the appeal. For this purpose, the term 'complainant' could actually be useful to identify the party that tries to contest conclusions in law or findings of fact in appeal.
- The appellate review of conclusions in law is de novo (this is beyond doubt, I believe). Moreover, there is no burden of proof as to legal conclusions.
- As to findings of fact, the complainant may wish to alter the factual basis of the decision by i) challenging the evaluation of the evidence, ii) presenting new evidence, and iii) introducing new facts. The latter two courses involve case amendments under Art. 12(4) RPBA, but admissibility is not the focus of the present post.
- As to any new facts introduced by a party in appeal, this party has the burden of proof, following the general rule.
- As to challenging the OD's evaluation of the evidence, T 1138/20 provides a comprehensive framework. The gist is that the Boards, in principle, apply a deferential standard of review to factual findings of the OD that are based on evidence. This means that the complainant has the initial burden to contest those findings in a substantiated way, e.g. by attacking the reasoning of the OD about the evaluation of the evidence or by filing appropriate counter-evidence (without prejudice to the limitations of Art. 12(4) and (6)).
- If the Board examines the evidence de novo (explicitly considered as a discretionary power of the Boards in T 1138/20, especially for documentary evidence), logically, the same rules of evidence as for the first instance proceedings apply (regarding the burden of proof).
- I expect that the Boards will not apply a deferential standard to inferences about what the skilled person does and knows as common general knowledge, except perhaps in the case that the OD based their inferences specifically on evidence submitted by the parties.
- Often, in appeal, the opponent repeats objections that the OD did not arrive at, and the proprietor may maintain auxiliary requests from the first instance proceedings and related factual assertions, e.g. about the technical effect. The examination of these issues, when done by the Board, is strictly speaking no review of the (reasoning) of the first instance decision, and the same rules of evidence apply as in the first instance proceedings. This applies broadly to any submission that benefits from the unless clause of Article 12(4) RPBA.
- In the decision at issue, the factual debate was about the sufficiency of disclosure.
- "The decision under appeal revoked the patent because in the opposition division's view, the patent did not sufficiently disclose the claimed subject-matter. The examples were contradictory, and there was no guidance in the patent as to which parameter to adjust in order to obtain the desired coating weight for layers A and B and the tension ratio."
- I understand that the Board applied a de novo review in the sense of T 1138/20. The opponent filed an expert declaration on the point, but it was late, and that evidence was not admitted.
- It might be observed that the Board will not necessarily give an express opportunity to file evidence to the parties once it decides to apply a de novo review of factual findings. However, where the OD's decision is not based on extensive consideration of evidence, parties should be prepared for a de novo review in appeal of factual findings under the current state of case law.
- I will post a second post about the decision soon with quotes from the decision.
EPO
The link to the decision is provided after the jump, as well as (an extract of) the decision text.
source http://justpatentlaw.blogspot.com/2023/12/t-107621-ii-contesting-facts-in-appeal.html
