Tuesday, 5 October 2010

T 114/09 – Still Pending

In G 1/09 we have seen that there are at least two types of pendency under the EPC: both applications and proceedings can be pending. The present case deals with the question of whether a request for oral proceedings (OPs) was filed in time, which, as we shall see, is related to the question of whether the proceedings were still pending.

The Opposition Division (OD) had sent a copy of the notice of opposition to the patent proprietor and invited him to file observations within a time limit of four months (R 57(1)) expiring on June 7, 2005. On May 17, the patent proprietor requested an extension of this time limit, which was granted, so that the time limit then expired on August 7. On July 29, the patent proprietor requested another extension, which was also granted (!), pushing the time limit to October 7. On October 4, the patent proprietor reiterated its request (!!) but this time the OD did not accept to go any further.

The EPO refused the request in a manner which, incidentally, I find somewhat confusing (especially for Latinists):

On November 10 the patent proprietor requested that the opposition be rejected and filed a precautionary request for OPs. It announced that it would provide arguments against the opposition before the end of November. Apparently these arguments were never filed. Three years later, the opponent asked the OD to finally revoke the patent. In November 2008, the patent was revoked without any OPs having been held.

[2] The impugned decision must be set aside, without an examination of its substantive merits, for the sole reason that the opposition division has made a substantial procedural error in violating the appellant’s fundamental right to be heard enshrined in A 113.

[2.1] Indeed, an inspection of the opposition file confirms that the […] patent proprietor made a request by letter of 10 November 2005, received at the Office by telefax the same day, for oral proceedings (OPs) according to A 116 to be held, if the OD intended to revoke the patent
“Should the OD nevertheless consider to revoke the patent, we request that OPs within the meaning of A 116 be summoned.” (NB: translated from the French)
The Board considers this request to be clear and unequivocal and therefore valid.

[2.2] The decision of the OD to revoke the patent was taken on 11 November 2008 and dispatched on 21 November 2008, as the conclusion of a procedure conducted entirely in writing and three years after the request for OPs was received and placed on file. This protracted delay and the fact that the promised response to the opposition, made by the appellant in the same letter, never seems to have been sent does not detract from the validity of the request for oral proceedings to be held.

It is also of no consequence to the validity of the request that it was made after the refusal to extend the time limit to respond pursuant to R 84 EPC 1973 using EPO form 2944C had been dispatched. The right to be heard in OPs subsists so long as proceedings are pending before the EPO (T 556/95 [4.4], T 598/88 [3]).

Thus, at the time the contested decision was taken a valid request for OPs was on file which should have been respected. It is consistent case law of the Boards of Appeal that a failure to do so constitutes a substantial procedural violation.

[2.3] Since a substantial procedural violation has been made the appeal fee must also be reimbursed (R 103(1)(a)) if this is otherwise equitable. In view of the fact that the contested decision makes no mention of a request for OPs, the Board can only assume that it was overseen. In consideration of the fact that the appellant was thereby denied the opportunity of submitting further arguments during such OPs which may have had influence on the decision in question, reimbursement of the appeal fee is deemed justified in the present case.

[3] Furthermore, despite the severe delay in the opposition procedure incurred so far, the Board has no choice but to set the contested decision aside as null and void and to remit the case to the department of first instance in order that the appellant’s right to be heard be respected (T 560/88 [6]).

Should you wish to download the whole decision just click here.