Friday, 4 June 2010

T 1365/09 – Dealing With Contradiction

What happens when an Opposition Division (OD) revokes a patent during oral proceedings (OPs) but then sends a communication stating that the patent is maintained in a form that corresponds to the patent as granted? What is the legal basis for dealing with such a contradiction?

** Translated from the German **

[1.2] The reasons for the decision mentioned in the impugned decision concern the rejection of the main request and of all auxiliary requests for lack of inventive step. However, the written decision sent to the parties used form EPA 2327 and declared that the patent […] was maintained “in amended form” on the basis of the description, pages 2 to 5, of claims 1 to 13 and the figures 1 to 5 of the patent specification,  these documents being apparently equivalent to the patent as granted.

[1.3] This contradiction had the consequence that the [patent proprietor] was not able to understand whether the patent was maintained or revoked. Moreover, [the proprietor] was not represented during the OPs where the decision was given.

Therefore, the [patent proprietor] had to assume, by way of precaution, that the patent was revoked. The mere contradiction concerning the effect of the decision adversely affects [the proprietor] and entitles him to file an appeal (A 107).

[1.4] Thus the appeal is admissible.

Rule 111(1)

[2.1] R 111 concerns the form of decisions and communications of the EPO. According to R 111(1) decisions may be given orally during OPs held before the EPO. Such decisions are then to be put in writing and notified to the parties.

Obviously, the decision given during the OPs has to be the same as the decision put in writing as both sentences of R 111(1) mention only one decision. This is clear especially in the English version (“… the decision may be given orally. The decision shall subsequently be put in writing …”).

[2.2] The written version of the decision of revocation that had been given orally differed at least from the printed form EPA 2327 which mentions the maintenance of the patent […] in amended form. However, there can only be one unambiguous decision. Therefore, the requirements of R 111(1) have not been complied with.

As a consequence, the impugned decision is unclear and has to be set aside.

Lack of reasoning

According to R 111(2), first sentence, decisions of the EPO which are open to appeal shall be reasoned. The impugned decision also violates this requirement because the reasons sent on April 14, 2009 do not give any reasons for the maintenance of the patent.

Therefore, the impugned decision is to be set aside.

Reimbursement of the appeal fee (R 103)

[4.1] According to R 103(1)(a) the appeal fee shall be reimbursed if the appeal is successful and if the reimbursement is equitable by reason of a substantial procedural violation. It is therefore necessary to examine whether there is such a substantial procedural violation.

[4.2] The decision notified in writing violates the duty to provide a reasoning (Begründungspflicht) pursuant R 111(1). This duty to provide a reasoning is a particular embodiment of the right to be heard enshrined in A 113(1), as a party also has a fundamental right to know why a decision having the stated effect has been taken. According to the established case law of the Boards of appeal of the EPA, a violation of the right to be heard is a substantial procedural violation.

The contradiction between the decision that had been given orally and the decision that had been notified in writing violates the requirements of R 111(1) and also constitutes a substantial procedural violation (see T 666/90 [2.2.2], where R 68(1) EPC 1973 was applied).

[4.3] Both substantial procedural violations justify the reimbursement of the appeal fee for reasons of equity.

To read the whole decision (in German), click here.


Anonymous said...

Remarkable case ;)

It seems a bit artificial of the Board to conclude that there is a lack of reasoning. Clearly the problem is that the written decision (patent maintained) differed from the oral decision (patent revoked), and clearly that is a substantial procedural violation. However, it would have been much worse if the reasons included in the written decision had actually supported the maintenance of the patent.

I find it truly amazing that the OD did not correct this blatant mistake under R. 140 EPC. According to point V of the decision, the Board has even inquired multiple times with the OD whether they were considering a correction.

Oliver G. Randl said...

I couldn't agree more.

However, this is not the first time I see an OD or an ED play possum. And indeed there is not much the Board can do in such a situation. From time to time there must be a bit of an atmosphere in Munich.