T 996/09 – Silence With Consequences

Once a Board has ordered the Opposition Division (OD) to maintain a patent in amended form with an adapted description, one might think that the opposition proceedings will come to an end soon. The present decision shows a case where the OD messed things up at such a late stage. It’s amazing to see how many procedural violations were made by a little silence.

A 113(1) - Right to be heard

[1] According to A 113(1), a decision of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comment. The right to be heard is a fundamental guarantor for the parties that proceedings before the EPO will be conducted fairly and openly (cf. J 20/85, [4(a)] and J 3/90) and is intended to ensure that the parties to the proceedings are not taken by surprise by grounds mentioned in an adverse decision (cf. inter alia T 669/90; T 892/92; T 594/00 and T 343/01, see “Case Law of the Boards of Appeal of the EPO, 5th edition 2006, VI.B.1, page 322).

According to the constant case law of the Boards of Appeal, the infringement of the right to be heard is a substantial procedural violation that justifies the reimbursement of the appeal fee (cf. “Case Law”, supra, VII.D.15.4.3, page 655).

[2] In inter partes proceedings the right to be heard is inextricably linked to the principle of equal rights which requires the opposition division (OD) to ensure that the parties can exchange their submissions in full and have equal opportunity to comment on them. Furthermore, the parties can legitimately expect to be informed about the conduct of the proceedings (cf. “Case Law”, supra, VI.A.1, page 311 and VII.C.2, page 533).

[3] In the present case, the board notes that, in the first appeal proceedings, the decision of the then competent board was sent to the parties on 6 February 2008. In a communication pursuant to A 101(1) and R 81(2) to (3) sent to the parties on 16 April 2008, the OD requested the patentee to provide, within a period of four months of notification of the communication, a description adapted to claims 1 to 27 of the first auxiliary request filed during the oral proceedings (OPs) before the board.

[4] On 28 April 2008, opponent 04 inquired by fax […] whether the OD wanted the opponents to file observations within the same time period set for the patentee in the above communication or, whether it intended to set the opponents a period for observations once the patentee/respondent had filed an adapted description. Precautionary, opponent 04 also requested OPs before any decision of the OD was taken. No reply was given to that enquiry of opponent 04 by the OD.

[5] In the absence of any reply from the OD, opponent 04 filed by fax of 14 August 2008 […] eight pages of observations on the criteria to be used for adapting the description and on the paragraphs of the description which, in its view, required such adaptation. On 20 August 2008, the OD forwarded these submissions to the other parties […].

[6] On 28 August 2008, the patentee provided by fax […] the adapted description, which, as shown by enclosed copies of a patentee’s letter and of an acknowledgment of receipt by the EPO, had already been sent to the OD on 31 July 2008. No mention was made in these submissions to those filed by opponent 04 on 14 August 2008 nor could any have been made since they were earlier […] than those made by opponent 04. OPs were also precautionarily (sic) requested in case of a decision of the OD adverse to the patentee/respondent.

On 4 September 2009, the OD forwarded these submissions of the patentee to all opponents, including opponent 04. No comments were made to the submissions of the patentee or to those of opponent 04. The OD set a time period of 2 months for the parties to file observations. This time limit expired with no submissions received from any of the opponents, not even from opponent 04.

[8] The now appealed interlocutory decision was issued on 13 March 2009 by the OD without further submissions from the parties or a communication from the OD.

[9] In view of the above indicated course of events in the opposition proceedings, the board considers that the OD failed to clearly inform the parties on both its opinion and its intentions and, as a result thereof, the parties were taken by surprise by the OD issuing an interlocutory decision without sending a further communication to the parties or summoning them to OPs. The mere forwarding of the patentee’s submissions with the adapted description cannot be seen, in the absence of any comment, as an acknowledgment by the OD of not having any objections thereto, let alone that this description overcame those objections raised by opponent 04 in its letter of 14 August 2008. All the less so, since no reply had ever been given to opponent 04 submissions by the OD or by the patentee in any of its submissions.

Although, by forwarding the patentee’s adapted description to the opponents, the OD gave them an explicit opportunity to comment on that description, the fact that opponent 04 did not seize this opportunity - not even by way of back-reference to its submissions of 14 August 2008 - cannot be considered as an acknowledgment of its agreement with that description or as a withdrawal of all its objections raised earlier in the proceedings.

In the absence of any reply to its submissions of 14 August 2008 by the OD or of any comment thereto by the patentee, opponent 04 could not have expected that these submissions would have been merely disregarded by the OD and that an interlocutory decision would immediately be issued by the OD without previously informing the parties of its intention. The more so, in view of the fact that its precautionary request for OPs filed on 28 April 2008 had never been withdrawn.

[11] In line with the above mentioned principles of good faith governing procedural matters between the EPO and the concerned parties, as established by the constant case law of the Boards of Appeal, the board considers that, in the present case, the OD contravened the requirements of A 113(1).

R 111(2) - Form of the decisions

[12] According to R 111(2), decisions of the EPO which are open to appeal shall be reasoned. The failure to provide adequate reasoning in a decision at first instance in accordance with R 111(2) is considered by the established case law of the Boards of Appeal to be a substantial procedural violation in itself justifying the reimbursement of the appeal fee (cf. “Case Law”, supra, VII.D.15.4.4, page 657).

[13] In the present case, the board notes that, in the decision under appeal, no reference is ever made to the submissions of opponent 04 filed on 14 August 2008 - not even in the “Summary of Facts and Submissions”. In that part of the decision under appeal, it is only stated that no comments or observations were received in reply to the communication of the OD dated 4 September 2008, wherein the amended description and documents filed by the patentee on 28 August 2008 were forwarded to the opponents. Nevertheless, as stated [above], opponent 04 submitted, at an earlier stage of the procedure, observations and objections in its letter dated 14 August 2008.

[14] Even if the OD would have considered the arguments and submissions made by opponent 04 in its letter of 14 August 2008 as not admissible or irrelevant, for which there is not a shred of evidence on file, the OD could not simply have ignored them, but should have reasoned its decision according to R 111(2), in order to give the party a fair idea of why these submissions were not considered convincing or inadmissible, if at all.

[15] So far the appealed decision was taken without any consideration of opponent 04’s submissions of 14 August 2008, which were not even mentioned by the OD, the decision under appeal should be considered as based on inadequate reasons or at least as not sufficiently reasoned and thus, not fulfilling the requirements of R 111(2).

A 116(1) - Oral proceedings

[16] Whereas A 113(1) establishes the parties’ right to be heard in general, A 116(1) establishes in particular the right to OPs at the request of any party. According to the case law of the Boards of Appeal, the right to OPs is an extremely important procedural right which the EPO should take all reasonable steps to safeguard. If a request for OPs has been made, such proceedings have to be appointed. This provision is mandatory and leaves no room for discretion. If such a request is ignored, even due to an oversight, the decision must be set aside as null and void (cf. “Case Law”, supra, VI.C.1, page 333). In line thereof, the established case law of the Boards of Appeal considers also the infringement of A 116(1) to be a substantial procedural violation justifying in itself the reimbursement of the appeal fee (cf. “Case Law”, supra, VII.D.15.4.2, page 654).

[17] In the present case, the board notes that, in its letters of 28 April 2008 and 14 August 2008, opponent 04 unambiguously requested OPs before any decision being taken by the OD.

[18] As stated in point [13] supra, none of these letters is mentioned in the decision of the OD dated 13 March 2009 and now under appeal. It becomes apparent that they were merely ignored by the OD since, at no moment in the opposition proceedings, the OD gave the parties any information about its opinion on these requests for OPs from opponent 04 nor was any reason given in its final decision for not granting them.

[19] In line with the above mentioned case law of the Boards of Appeal, all parties to the opposition proceedings and, in particular opponent 04, could legitimately have expected to be informed by the OD in case that it did not intend to grant these requests for OPs and, in that case, to be given the opportunity to comment on such an important procedural issue.

[20] Therefore, in view of the facts of the present case, the board considers that, for this reason alone, a substantial procedural violation has occurred in the first instance proceedings and that the requirements of A 116(1) had not been fulfilled.

The Board then remitted the case to the first instance.

It may be a detail without importance, but I am astonished to see how often the Board cites the Case Law book, indicating even the page number, instead of citing the relevant decisions given therein.   

If you wish to download the whole decision, please click here.

NB: This decision has also been discussed here.