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Case law 19 okt 2022

Correcting the minutes of the oral proceedings of an Appeal

-Dit artikel is alleen in het Engels beschikbaar - In opposition it was found that the main request was not inventive yet the patent was maintained in amended form based on auxiliary request 4. Both Patentee (P) and Opponent (O) appealed the decision. In the resulting appeal procedure (T 0262/17) oral proceedings were held and the patent was revoked. In a letter following the publication of the minutes of the oral proceedings, P requested correction of the minutes. The Board of Appeal (Board) provided an analysis based on relevant case law and decided not to amend the minutes.

This is a case law article about: T 0262/17

T 0262/17

Background

In its request for amending the description P would like to see noted that P protested against non-admittance of specific data (Annex II) that was in the minutes of the oral proceedings of the opposition. This data supported that a specific class of oils (group II base oils) performs better. P also requested that the minutes reflect that O acknowledged the beneficial properties of this ‘group II base oils’ when discussing document D4. During the appeal it was concluded there was no evidence on file that group II base oils perform better (as the data allegedly supporting this was not admitted) and therefore for inventive step no benefit could be drawn from this.

The Appeal

Pursuant to Rule 124(1) EPC, the minutes of oral proceedings shall be drawn up containing inter alia the essentials of the oral proceedings and the relevant statements made by the parties.

In reason 2 the Board referred to T 0263/05 which discusses the required content of minutes of oral proceeding of an Appeal. T 0263/05 states that the minutes should comprise:

  • The requests of the parties on which a decision is required.
  • Statements on the definition of the subject matter (e.g. abandonment of  subject matter) when relevant for the decision.

T 0263/05 also states what should not be in the minutes:

  • The arguments of the parties.
  • Statements that have no bearing on the decision, but that may be relevant in any subsequent proceedings in national courts.

First the Board stated that considering the proposed corrections of P related to arguments, the requested corrections have to be refused.

Then the Board reconstructed the oral proceedings based on its written notes, its recollection of the proceedings and on the text that did make the minutes. Based on these sources the Board found that P did not protest against the non-admittance of the of specific data after having heard the decision on the admittance of the data.

Moreover P alleged that he submitted that ‘although D4 should not be not admissible, the statement that O made on class II oils in relation to D4 should be admitted’. P also deemed the OD announced that both the statement and D4 are not admissible. 

Also these allegations were not according to the recollection and notes of the Board. The Board concluded in reason 5.3: “Therefore, the passage mentioned under point II(b) above does not correctly reflect the course of the oral proceedings and also on this ground the request to insert this passage into the minutes has to be refused.”

Decision of the Board

The patent proprietor's request to correct the minutes of the oral proceedings was refused.

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