Not enough rigor shown by EPO Board of Appeal

Decision R 3/10 is only the second occasion (or second instance, if you prefer the pun) in which a party has succeeded in convincing the European Patent Office (EPO)'s Enlarged Board of Appeal to set aside a decision of a (lower) Board of Appeal.  While such petitions for review provide a possible mechanism to overturn a Board's decision, the grounds are very limited and R 3/10 brings the score so far to Boards of Appeal: 57 - Petitioners: 2. 

The background
The only previously successful petition (R 7/09) set aside a decision given by a Board where the opponent's appeal appeared not to have been contested by the patentee, but it then emerged that the patentee had never received the grounds of appeal or the invitation to respond, and was taken completely by surprise when a final decision issued from the Board. The circumstances of R 3/10 are more nuanced, more contentious and therefore more interesting.

"If I have any say in the matter",
muttered Ziggy, "your pinbones will be
long gone before rigor mortis sets in"

The impugned decision in this case was T 136/09, concerning a patent covering a method of preparing a raw fish product by removing the pinbones quickly, before the fish meat succumbs to rigor mortis. The patent was opposed primarily on the grounds of lack of novelty and lack of inventive step, with the opponents relying on various prior art disclosures suggesting that processing and pinboning take place soon after catching the fish, but it was arguable whether there was a clear disclosure that this should occur pre-rigor, as the claims required.  This was one of those inventions where, even if novelty were established, an inventive step challenge would never be far behind.

 The opposition division held that the patent as granted lacked novelty but maintained the patent in amended form, and appeals were filed on both sides. Once both sides had presented their cases in writing, they were summoned to oral proceedings, which is where the trouble began.

The oral proceedings

What actually happened at oral proceedings is unclear in several respects, this being exacerbated by the customary practice of issuing Minutes which are almost entirely silent on what anybody actually said or argued. [Merpel comments: suffice to say that the Minutes devote more lines of text to the enthralling issue of who appeared for each party and how they identified themselves -- passport being a particularly popular choice, incidentally -- than to the actual points discussed over the course of a six-hour hearing].

It appears -- not from the Minutes but from evidence presented to the Enlarged Board -- that following some general opening remarks indicating that the festivities would centre on novelty and inventive step (this also having been flagged in the Summons to oral proceedings), the Chairman said he would like the parties to address the issue of novelty as regards the main request and a few of the auxiliary requests which had been grouped together, and invited the opponents to speak first, followed by the patentee. 

Awaiting the Board's decision on
novelty, the patentee's attorney
relaxed and polished his inventive
step arguments, little suspecting the
nasty surprise waiting for him

Both sides duly made their novelty arguments as requested, with no discussion of inventive step taking place. Nor did the Board ask any questions relating to inventive step or prompt the parties to address obviousness issues. When both sides had finished, the Chairman indicated that he wished to terminate the discussion of this part of the proceedings with a view to deciding the issue under discussion. The exact words used at this point are disputed, as discussed below, but it is not disputed that both parties were asked if they wanted to make any additional comments before the Board retired to consider, and both answered "No."

On reopening the proceedings the Chairman announced a decision: the main request was novel but it lacked an inventive step (the same being true for the auxiliary requests considered simultaneously). The patentee's representative immediately objected that inventive step had not even been discussed , but the Board dismissed this submission saying (according to the Minutes) that "the Chairman had explicitly indicated [prior to closing the discussion] that the Board will decide on both novelty and inventive step". 

What was really said?
The patentee later submitted declarations from five people present at the oral proceedings, denying that the Chairman ever mentioned inventive step as he was closing the debate, and claiming instead that the Chairman said a decision would be taken "on patentability". All of the declarations agreed that the parties had been asked only to address novelty and that no discussion of inventive step had taken place.

Merpel's interlude

Merpel says, the best part of this decision is trying to imagine the debate that must have taken place between the Board members behind closed doors: 

"So we're agreed, we can't quite kill it off for lack of novelty. But we're agreed that the invention is obvious, right?" 

"Well y-e-s-s, it looks that way, but shouldn't we discuss it first with the parties? Decide on the closest prior art, the skilled person, motivation to combine, all that stuff? I'm pretty sure we're supposed to. The right to be heard and so on." 

"Don't be such a softy. Everyone knew inventive step was up for debate, and I'm pretty sure we mentioned it at first thing this morning. The Chairman even asked both sides just now if they wanted to say anything else before we decided on patentability and they turned down the chance. I say we kill the patent now and let everyone get off home."

"How about a compromise: we bring them all back into the room, announce our decision that the claims lack novelty, and say that we are also inclined to refuse for inventive step, unless they want to address us 'further' on that point. That would at least keep the Enlarged Board from breathing down our necks in a petition for review ... "

"Don't make me laugh. The Enlarged Board has only ever reversed one Board of Appeal decision, and I suspect they only did that to show everyone that it was theoretically possible, just like time travel through wormholes might be possible, or like an EPO examiner could some day spontaneously agree that an amendment finds good basis in a drawing. Trust me on this, the Enlarged Board is the least of our worries. Let's just refuse and get it over with."

(Enough of the fictitious speculation says the IPKat. That's not how Board members discuss their cases.)

The Enlarged Board's decision
The Enlarged Board accepted the patentee's account that the inventive step refusal came as a complete surprise (i.e. implicitly rejecting the claim made in the Minutes that the parties had been specifically warned that a decision on inventive step was imminent). It appears that the Enlarged Board was at least partly swayed by common sense considerations: if the Chairman really had explicitly warned that a decision was to be given on both novelty and inventive step together, why on earth (the patentee rhetorically asked) would either side have declined to make further submissions there and then, knowing that they were forfeiting their right to discuss what might be the most critical point of the entire appeal?

The only possible answer, said the Enlarged Board, was that, whatever the Board of Appeal may have thought, there was a definite disconnect in understanding between the parties and the Board. The parties clearly believed that novelty was being decided separately from inventive step. They only realised that the Board was dealing with novelty and inventive step together after the Chairman announced the decision of lack of inventive step. This then became a fait accompli - at which point no matter how aggrieved the patentee may have been, the Board's decision was final and not open to discussion.

In the subsequent discussion of the remaining auxiliary requests, the Board firmly shut down any debate of the inventive step of each request as a whole and only admitted arguments directed to the new features added in that auxiliary request -- after all, the inventive step of the remainder of the claim had been decided on earlier.

The decision contains some good material on when and how Article 112a should be applied. A petition for review is allowable if there has been a substantial procedural violation -- in this case the right to be heard and to present comments at oral proceedings. The Enlarged Board noted that this was an objective question: it did not matter that the Board had acted in good faith, believing that neither party wanted to comment on inventive step, and nor did the question turn on whether the Board had deliberately denied the patentee the right to address inventive step prior to giving its decision.

As a result of the "unfortunate misunderstanding" between the Board and the patentee as to what the Board was intending to decide on, and because the formal statement of the Board's decision automatically precluded any possibility of further debate on inventive step, the Enlarged Board held that the patentee did not in fact have any opportunity to address this issue. This was a substantial procedural violation, and required the case to be remitted to the Board for a discussion of inventive step at oral proceedings.

The IPKat suspects this decision will be welcomed. The Enlarged Board could conceivably have reached the opposite conclusion by treating the Minutes of oral proceedings as an unimpeachable record of what actually happened. To its credit the Enlarged Board was prepared to look behind the very sparse Minutes and to take into account the patentee's version of events. The Enlarged Board also looked at circumstantial evidence (e.g. both parties declining to address the Board further at what ought to have been a critical moment if the Board had indeed warned them this was the first and last chance to talk about inventive step). The Enlarged Board's concern was to uncover objectively whether the parties had indeed been afforded the opportunity to address inventive step before the decision issued.

Unlike EPO examiners at oral proceedings, history
does not record Pope Gregory the Great as
having made any infallible pronouncements

The IPKat wonders if oral proceedings would not be fairer for all concerned if decisions of the EPO -- both at first instance and on appeal -- did not become immediately binding and did not preclude even a discussion of procedural fairness at the moment the chairperson uttered the magic words "It is decided that ...".What would be so wrong with a Chairman being allowed to say "in the interests of fairness we are going to reopen this debate to conclusively deal with your objection. You'd better make it good."?

The EPC could provide for provisional or interim verbal decisions allowing oral proceedings to be decisively dealt with and moved along, but with a decision only becoming final when issued in writing. Such an interim decision might only be revisited in limited specified circumstances, such as where a party argues that the right to be heard has been infringed, or where the relevant EPO division or Board is convinced on mature reflection that it should change its mind. 


After all, there must be countless examples where an examiner has realised that the orally-announced decision on e.g. inventive step does not stack up when one tries to reason it out in writing; in such cases one can often see that the eventual written decision is a vain attempt to dignify a poor decision with a threadbare cloak of reasoning. Incidentally, such a practice might also reduce both the number of appeals and the number of petitions for review.

As for the shortcomings of the EPO's minute-writing practice mentioned above - this is a topic which deserves a separate post, and is one to which this Kat hopes to return shortly.