T 1411/07 – Looking For The Train Of Thought

Sometimes Opposition Divisions (OD) give only very concise statements on the admissibility of an opposition. This concision may become problematic if the patent proprietor raised objections against the admissibility.

The present decision deals with the rejection of an opposition by the OD. The impugned patent had been opposed on the grounds of lack novelty and lack of inventive step. The patent proprietor contested the admissibility of the opposition because the opponent only cited documents but did not justify how they were destructive of novelty and/or inventive step. As stated in T 448/89, a mere reference to documents was not sufficient. However, the OD found the opposition to be admissible. In its decision, it only stated that “the opposition fulfils the requirements of A 99(1) and A 100 EPC [1973] as well as R 55 EPC [1973] and is, therefore, considered to be admissible.” In its answer to the statement of grounds of appeal, the patent proprietor criticized the impugned decision because it did not contain any justification for considering the opposition to be admissible.

This argument did not fall on deaf ears:

*** Translation from the German ***

[3] According to the established case law of the Boards of appeal an appealable decision, in accordance with R 111(2) (R 68(2) EPC 1973), has to demonstrate in a logical train of though the considerations (Erwägungen) that justify the statement made. Moreover, the conclusions drawn from the facts and evidence have to be exposed in a clear manner. Therefore, all the relevant facts and all the evidence, as well as the decisive considerations concerning the legal and factual circumstances of the case have to be appreciated in detail (ausführlich) (see T 278/00 [2-5]).

[4] The requirement of a reasoned decision aims at giving the parties, and, in the case of appeal proceedings, also the Board of appeal, the possibility of examining whether the decision is justified (or not) in view of the decisive considerations, facts and evidence. When, as in the present case, a decision on the admissibility of the opposition is taken, it is necessary to indicate the logical train of thought as well as the decisive considerations regarding the factual and legal circumstances of the case on which the decision that the opposition is admissible is based.

[5] In the present case the admissibility of the opposition had been contested already in response to the notice of opposition (i.e. in the submissions dated December 28, 2004). The [patent proprietor] had exposed in detail that the opposition was not substantiated because the notice of opposition did not satisfy the requirements of the then applicable R 55 c) EPC 1973. After the OD, in a notification dated August 11, 2008 [NB: should read 2006], had only stated that the opposition was considered to be admissible, the [patent proprietor], in a submission dated December 8, 2006, repeated its objection against the admissibility of the opposition and made further detailed statements. Thus the objection that the opposition was inadmissible was clearly discernible as such to the OD. Nevertheless, in the impugned decision it was only stated that the opposition was admissible, without there being any indication which considerations taking into account the submissions of the [patent proprietor] and the legal and factual circumstances of the case had led the OD to this decision.

[6] The absence of any indication of those considerations on behalf of the OD, in view of the factual and legal circumstances of the case, and the complete absence of a logical train of thought keep both the parties and the Board guessing which considerations have led the OD to the conclusion that the opposition had to be considered as sufficiently substantiated. Therefore, the Board is of the opinion that the impugned decision is not reasoned within the meaning of the then applicable R 68(2) EPC 1973 (R 111(2)).

[7] However, the admissibility of an opposition is to be treated before (vorgreiflich) deciding on the substance of the matter because there are no proceedings if the opposition is inadmissible and the patentability of the patent in disputed is not to be decided upon. Therefore, the lack of reasoning of a decision that has to be taken first (vorgreiflich) constitutes a substantial procedural violation.

The Board then remitted the case to the first instance.

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