Posted on 28/1/2021

Can the EPO Boards of Appeal review findings of fact?

A recent patent decision has changed how far the EPO Boards of Appeal reviews findings of fact. 

Previously, the EPO Boards of Appeal have limited themselves in how far they can review findings of fact at first instance, deciding largely only on matters of law. However, a recent decision, T 1604/16, has now re-evaluated the findings of fact from a first instance procedure.

The patent in question was EP2293755, which related to a foldable ramp for loading a wheelchair into a vehicle.

The patent was opposed, and revoked on the basis that the invention was not new. This was not due to an earlier disclosure in a patent document, but instead due to the existence of a prior public use of a ramp which fell within the scope of the claims of the patent.

The opponent argued that its delivery of a car with a ramp to a customer, as depicted in the photographs they provided, together with an invoice showing that a car with a taxi ramp was sold and delivered to this customer before the priority date of the patent, meant that this type of ramp had been made available to the public before the patent was filed.

However, while the invoice did indeed show that a car with a taxi ramp was sold and delivered to the customer before the priority date of the patent, the photographs showing the car were only taken by the opponent after the filing date of the patent, after the car had been involved in an accident and been repaired.

This therefore raised the question of whether the ramp shown in the photographs was definitely the same as the one originally delivered to the customer when she bought the car. The customer herself was called as a witness, and was heard by the Opposition Division during the opposition oral proceedings.

Based on the evidence and the customer’s testimony, the Opposition Division agreed with the opponent, and concluded that the prior use removed the novelty of the claims and revoked the patent.

The patentee appealed this decision.

A previous EPO Board of Appeal decision (T 1418/17) had held that a board should only overrule a finding of fact made at first instance if the evaluation of the evidence met any of the following criteria: (i) essential points had not been considered; (ii) irrelevant matters had been taken into consideration; or (iii) illogical conclusions had been drawn.

The Board of Appeal in this case had first to decide if any of these criteria were in fact met; or, if they had not been met but the decision of the Opposition Division was nevertheless considered to be incorrect.

In the Appeal, the Board only had the written documents to rely on, including the written transcript of the customer’s testimony, unlike the Opposition Division who were able to question and observe the customer directly.

As the Board did not hear the customer’s testimony and only had the written transcript as evidence, were there restrictions on the Board’s competence to review the Opposition Division’s finding of fact?

The Board saw no reason to dispute the credibility of the customer’s testimony, nor that any pertinent questions had not been asked by the Opposition Division. They were therefore satisfied that written transcript of the customer’s testimony was equivalent evidence to hearing the testimony in person. It therefore did consider itself in a position to be able to review and, if necessary, overturn the Opposition Division’s decision on the public prior use, including its finding of fact based mainly on the customer’s testimony and the photographs.

In the EPC, the Boards of Appeal are deemed to have the competence to review appealed decisions in full, including points of law and fact, in accordance with Article 6 of the European Convention on Human Rights, which stipulates that there must be at least one judicial instance that can review a case in full, on both the law and the facts. As the Boards of Appeal are the only judicial body to review decisions by the departments of first instance at the European Patent Office, they therefore have this competence.

In the appeal, the patentee (as appellant), was able to point to passages of the transcript of the customer’s testimony which cast doubt on whether the repairs to the car might have involved the modification of the taxi ramp previously installed and originally sold with the car. The testimony did state that specifically the ramp was damaged and needed repairing.

The customer stated that she could not note any differences between the ramp before and after the repairs, but also repeatedly explained that she had no technical skills.

It was thus possible that she had overlooked a visually small but technically substantial difference in the mechanism for folding the ramp, which is, by design, mostly hidden from view. Although she confirmed that the handling and the movement of the ramp had not changed after the repairs, there were doubts whether the same movement was made possible by a different mechanical arrangement or whether she could even notice a relatively minor difference of movement. The customer was unable to describe the mechanism or the movement of the ramp in technical terms.

An important point was also that all the photographs provided had been taken after the repairs had been carried out, and not before the priority date. While the customer said that she could not determine any residual damage after the repairs, the Board of Appeal doubted it was possible even for a technically competent person to note any such residual damage without a comparison with the status before the accident or before the repairs.

A further issue was that the opposition had been withdrawn, so the opponent was unable to provide any evidence to prove otherwise, as they were no longer party to the proceedings.

Therefore, the Board concluded that there was sufficient doubt that the ramp depicted in the photographs was made available to the public before the priority date of the patent, and so it did not remove the novelty of the claims. The Opposition Division’s decision on novelty was therefore overturned. Additionally, none of the other documents cited against the patent were considered sufficiently relevant to render the invention obvious, so the patent was maintained as granted.

Going forward, therefore, this decision may become important for both patent owners and opponents, as the facts upon which a decision at the EPO is reached may be more open to challenge in an appeal, and not just the legal reasoning behind the decision. If you have any questions about the EPO Boards of Appeal, please contact one of our attorneys.

Wilson Gunn