Onmiddelijk als zodanig herkenbaar

Enlarged Board of Appeal 15 juni 2011, R 0017/10 (Kureha Corp tegen Papierfabrik August Koehler AG)

Octrooirecht. Procedure bezwaar tegen inbreng document. Petitie en betaling was tijdig, voldaan aan rule 107 EPC. Rule 106 EPC: bezwaar tegen toelaten van inbreng van document (i.c. met argument: misbruik van procesrecht) moet als zodanig en onmiddelijk herkenbaar zijn als formeel bezwaar.

Bijvoorbeeld in notulen van mondelinge procedure. i.c. kan een brief om document niet toe te laten tot de procedure niet als zodoende kwalificeren. Ook was er tijdens mondelinge procedure geen bezwaar gemaakt. Verzoeker werd niet gefrustreerd om commentaar te geven op de ontoelaatbare inbreuk van D9. Herzieningspetitie is geweigerd.

2.1 As the Enlarged Board held in case R 4/8, raising an objection pursuant to Rule 106 EPC is a procedural act and, except where such objection could not be raised during the appeal proceedings, a precondition for access to an extraordinary legal remedy against final decisions of the Board of Appeal. Pursuant to Rule 106 EPC a petition under inter alia Article 112a(2)(c) EPC (i.e. on the ground that, as petitioner alleges, a fundamental violation of Article 113 EPC occurred) is admissible only if an objection in respect of the procedural defect was raised during the appeal proceedings and then dismissed by the board of appeal. Therefore, such an objection must be expressed by the party in such a manner that the board of appeal is able to recognize immediately and without doubt that a formal object within the meaning of Rule 106 EPC was raised, so that the objection can be dealt with by the board either by meeting or by dismissing it.

2.2 Evidence for the fact that such a qualified procedural objection was raised during oral proceedings is normally that it appear in the minutes, which, as prescribed by Rule 124(1)EPC, must contain the essentials of the oral proceedings and the parties' relevant statments, the latter certainly including any objection pursuant to Rule 106 EPC. However, the minutes of the oral proceedings on 30 March 2010 contain nothing about an objection by the petitioner, nor did he object to the contents of the minutes as notified to him about six months before he filed the present petition. Anyway, the petitioner has not claimed that he raised during the oral proceedings any objection which would quality under Rule 106 EPC.

2.3 The petitioner’s letter of march 24 2010 requesting that D9 not be admitted into the proceedings on the ground that its late filing constituted an abuse of the proceedings by the other party (see II (V), above) cannot be considered of Rule 106 EPC. The request and the arguments in support were directed against the conduct of the other party, not against a procedural violation within the meaning of article 112a (c) or Rule 104 EPC, which by definition can be committed by a board of appeal only. Moreover, at that time the board of appeal had not yet reacted in a way to either the respondent’s conduct in question or to the petitioner’s criticisms. However, an object under 106 EPC must be expressly described as such; it cannot be formulated prematurely and without specifying the alleged fundamental procedural defect within the meaning of Article 112a EPC (R 8/08, R 6/09).

2.4 The exception that ‘such objection could not be raised during the appeal proceedings”( Rule 106 EPC) does not apply in respect of any of the alleged procedural defects.

Even assuming, for the sake of argument, that in the oral proceedings it was too late to confront the petitioner with arguments against the probative strength to respond ( see V (i) above), there was nothing to stop the petitioner during the oral proceedings from objecting to such a procedural violation, for example by requesting an interruption or a postponement of the oral proceedings in order to prepare its defense against this ( allegedly) new and surprising line of attack.

The same opportunity existed for the petitioner in regard ti the consideration of D9 ( V (i i ) above) and the ( alleged) failure to decide on the petitioner’s request to disregard this document (relied upon under Rule 104 (b) EPC – V above). There is no reason to assume, nor has it been contended, that during the oral proceedings on 30 march 2010, at the end of which the debate was closed and the decision under review was announced, the petitioner was prevented in any way by the board of appeal from commenting on the admissibility of D9 (again) and/or from raising an explicit formal objection against the taking into account of (the content of) that document. For the purpose of Rule 106 EPC it is, therefore, immaterial that ( apparently) no explicit decision was taken on the request to disregard D9. The admission of late-filed documents and/or other evidence is  matter for the board’s discretion and, therefore, as such not subject to review under Article 112a EPC. 

Lees de beschikking hier (pdf)
Inzake EP 1118382, hoewel deze zaak, gezien partij, meer lijkt op CA 1118382
Rules EPC