http://ipkitten.blogspot.com/2021/01/boards-of-appeal-are-competent-to.html
One important consideration in any legal system is the competency of appeal departments to review findings of fact at first instance. The case law of the Boards of Appeal has historical permitted only limited reassessment of facts at the appeal stage. However, a recent EPO Board of Appeal decision (T 1604/16) has now taken a differing approach to preceding Boards of Appeal on this issue. The Board of Appeal found that that Boards are broadly competent to reassess findings of fact by a first instance department. The decision in T 1604/16 thus has potentially important consequences for what aspects of an Examining or Opposition Division decision may be challenged by an appellant.
Evidence before the Boards of Appeal
The types of evidence that may be considered by the EPO are specified in Article 117 EPC, and include inter alia documents, witnesses and expert opinions. According to Boards of Appeal case law, no type of evidence should be given more weight than any other type of evidence. This is the so-called “free evaluation of evidence” principle (G 3/97) (Case Law of the Board of Appeal, G 4.1). According to the free of evaluation of evidence principle, evidence presented at appeal should not carry more weight than evidence presented at first instance (T 1107/12, T 1418/17 and T 621/14).
The principle of the free evaluation of evidence led to the finding in T 1418/17 that EPO Boards of Appeal should only overrule a finding of fact made by a first instance department in limited circumstances. The Board of Appeal held that the only circumstances in which a Board of Appeal may revoke a finding of fact were those in which the first instance department a) did not consider essential points, b) took irrelevant matters into consideration or c) drew illogical conclusions.
Foldable ramps
The patent in question (EP2293755) in the recent Boards of Appeal decision related to a foldable ramp for loading wheelchairs into a vehicle. At opposition the patent was found to lack novelty. The Opposition Division based its decision on evidence presented by the Opponent purporting to show prior public use. The evidence included an invoice for the sale of a car and ramp to a Ms Merz dated prior to the patent priority date, a photo of the car, and a witness statement from Ms Merz.
Crucially, the photo of the car was taken after the car had been repaired following an accident. Ms Merz’s witness statement was that the ramp shown in the photo of the car was the same ramp that had been sold to her before the patent’s priority date. The Opposition Division’s decision was thus based on a finding of fact, based on the available evidence, that the ramp in the car sold to Ms Merz and the ramp in the photo were the same [for more on prior use see IPKat: Proving the existence of confidentiality agreements and the celestial teapot – T 2037/18)].
The proprietor appealed against the Opposition Division. A critical question for the Board of Appeal was whether or not they could be considered competent to review the Opposition Division’s finding of fact based on the available evidence.
| Photographic evidence |
In the room where it happens
The problem faced by the Board of Appeal in the case was that the evidence available to the Opposition Division took a different form to the evidence available on appeal. In particular, at first instance Ms Merz gave her evidence to the hearing directly in the form of a witness statement. On appeal, the Board of Appeal only had the verbatim transcript of Ms Merz’s statement.
Unlike the Opposition Division, the Board of Appeal therefore did not have the benefit of being able to directly question Ms Merz, or to assess Ms Merz credibility based on her mode of address. The Board asked whether, if they reached a different finding of fact based on the transcript, this would not thereby go against the principle of the free evaluation of evidence, i.e. by giving more weight to the transcript than the hearing?
Re-evaluating evidence on appeal
In what might be considered a contradiction of T 1418/17, the Board of Appeal did consider themselves competent to review the Opposition Division’s finding of fact, regardless of whether the circumstances specified in T 1418/17 were present. The Board of Appeal argued that interpreting T 1418/17 as broadly constraining the competence of the Boards of Appeal to the review findings of fact was not justified by either the EPC or established case law. The Board of Appeal could see no reason that the ability of Boards of Appeal to re-evaluate evidence should be constrained as specified in T 1418/17. On the contrary, the Board of Appeal noted that the ability of the Boards to review a first instance decision in full was, in fact, necessitated by Article 6 of the European Convention on Human Rights (Guide on Article 6 of the European Convention on Human Rights, paragraph 84).
With regards to the facts of the case, the Board of Appeal noted that, importantly, Ms Merz’s credibility or truthfulness had not been questioned by the Opposition Division. It was therefore not necessary to take into account any non-verbal cues that might influence a finding of whether or not Ms Merz’s was to be believed. Furthermore, the Board of Appeal was satisfied that the Opposition Division’s questioning of the witness had not left any gaps. The Board of Appeal therefore concluded that the transcript of Ms Merz’s testimony could be viewed as equivalent evidence to that of hearing Ms Merz’s testimony in person. The Board concluded that they were therefore competent to reassess the finding of fact at first instance.
Did the Opposition Division err in their finding of fact?
On appeal, the patent owner pointed out passages of the witness statement transcript which cast doubt on the claim that the repairs to Ms Merz’s car after the accident did not modify the foldable ramp previously installed and originally sold with the car. These included the statement that the ramp itself had been damaged in the accident. Importantly, the Opponent had withdrawn their opposition by the appeal stage, and so was not in a position to address these doubts [for more on the burden of proof in prior use cases see IPKat: Shifting the burden of proof back to the patentee (T 1299/15)]. On the basis of the doubts raised by the patent owner, the Board of Appeal concluded that the Opposition Division had erred in their conclusion that the ramp shown in the photos was, on the balance of probabilities, evidence of prior use. The patent was thus maintained as granted.
Final thoughts
The decision in T 1604/16 has been given the second-highest distribution classification of “B”, meaning that it is considered significant enough by the Board to be distributed to Boards of Appeal chairmen and members. However, it remains to be seen whether future Boards of Appeal will follow this recent case or defer back to the criteria specified in T 1418/17 when asked to reassess findings of fact at first instance.
When it comes to the application of the patent law, the national courts of contracting states and the EPO are supposed to be in alignment. However, this principle does not prevent divergent decisions on the validity of same patent. One reason often cited as an explanation for this divergence is the differing approaches of the EPO and the national courts to the hearing of evidence. The courts typically devote considerably more time to the hearing and evaluation of expert evidence and witness testimony than the EPO. The EPO by contrast prefers to focus its time on the evaluation of documentary evidence. The decision in T 1604/16 may therefore be welcome to those wishing for a greater focus on oral evidence by the EPO Boards of Appeal. However, the applicability of the decision outside the issue of prior use remains to be seen.
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