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