R 0003/15: surprising interpretation of feature violates right to be heard

In R 0003/15 of 28 November 2017 the EPO's Enlarged Board of Appeal found the right to be heard of the patentee violated, annulled the Technical Board's decision and sent the case back for re-hearing.

Svarovski-Optik's patent EP 1 746 451 had been upheld with limited claims by the Opposition Division. Upon appeal, the Technical Board of Appeal 3.4.02 revoked the grant of the patent. Svaroski-Optik filed a petition for review by the Enlarged Board of Appeal under Article 112a(2)(c) EPC (fundamental violation of Article 113(1) [right to be heard).

Svaroski-Optik alleged three fundamental procedural defects. The first objection was dismissed by the EBO because it had not been raised in a timely and specific manner during the appeal proceedings (Rule 106).

With its second objection, Svaroski-Optik argued that the Board of Appeal had adopted, for the first time in the written grounds for the decision, an interpretation of a claim feature that had not been anticipated by either party. The Opposition Division had identified three distinguishing features of the invention over the closest prior art, telescope IOR-01 (prior public use). One of them was that the "subjective field of vision was at all zoom levels at least 22°". The Board of Appeal constructed the feature differently. According to the BoA, the feature only required a subjective field of vision of at least 22° at zoom levels of at least 4. Constructed like this, the feature was disclosed by the telescope IOR-01, which led to a new formulation of the problem to be solved (the dreaded - by patentees - "alternative embodiment of ...") and subsequently to a finding of lack of inventive step.

22° field of vision? No way!

Neither party had advanced such a claim construction or formulation of the objective problem during the entire proceedings. Since this construction was first advanced by the BoA in the written grounds for the decision, Svaroski-Optik could not have objected to it during the appeal proceedings, and the objection was raised in a timely manner in the petition for review (Rule 106, last part of sentence).

By adopting a surprising claim construction only in the written grounds, without giving the parties the opportunity to comment on it, the Board of Appeal had violated Svaroski-Optik's right to be heard. While it had been discussed whether a limitation of the zoom level of the telescope IOR-01 could lead to the above discussed feature without inventive step, the discussion did not occur in the context of claim construction and did not change the fact that the newly adopted claim construction was surprising.

Since the case was to be re-heard by the BoA anyway, the Enlarged Board of Appeal did not address the third objection.

A big thank you to KatFriend Heiko Sendrowski for alerting IPKat to the decision - in the pre-Christmas stress, it probably would have slipped our attention.