T 571/09 – That Was Quick!

This decision deals with an appeal against the decision of the Opposition Division (OD) to reject the opposition against a European patent.

The opposition had been filed on September 11, 2007, and the patent proprietor had submitted a response dated December 17, 2008. The EPO transmitted this response to the opponent on December 24, 2008. The Office decided to reject the opposition in a letter dated February 6, 2009.

The opponent filed an appeal and pointed out that its right to be heard had been violated. The short time between the receipt of the response of the patent proprietor and the decision of the OD had made it impossible to comment, all the more as there was a holiday period between December 24 and January 6. The case was not yet mature for a decision as the opponent had not been heard on the problem-solution approach.

The opponent requested the following question to be referred to the Enlarged Board of appeal (EBA):

“Has the right to be heard be violated when the response of the patent proprietor dated December 12, 2008, comprising auxiliary requests, has been transmitted to the opponent in a registered letter dated December 23, 2008 and delivered on January 2, 2009 (R 126(2)) and the decision has been handed over to the postal service on February 2, 2009, i.e. even before a time limit of only one month had expired?

Here a one-month time limit is clearly too short. The time between December 24 and January 7 is a general holiday season, so that the treatment of the letter could only take place after January 7. Moreover, the subject-matter was complex and there were additional auxiliary requests, where a waiting period of at least two months would have been appropriate (“Case law” 2010, T 263/93).

Has the right to be heard been violated if the decision is based on reasons on which the opponent has not been heard before and raises questions (“not clear”) which could have been clarified by the opponent during the first instance if it had been requested to do so?”

The Board first deals with the patentability of the request before it and comes to the conclusion that the subject-matter of this request is both novel and inventive. It then deals with the request for reimbursement of the appeal fee and the question to be referred to the EBA:

*** Translated from the German ***

Reimbursement of the appeal fee

[5.1] Whether R 67 EPC 1973 (cf. T 630/08) or R 103(1)(a) EPC (see T 616/08) is applicable in the present case may be left open because both provisions require the reimbursement to be equitable by reason of a substantial procedural violation if, as here (sic), the appeal is allowed.

[5.2] The [opponent] is of the opinion that the decision on the opposition, which has been taken without requesting further clarifying comments or at least giving [the opponent] an appropriate period of time of two months after transmission of the written submissions of the adverse party, constitutes a substantial procedural violation affecting the opposition proceedings. Pursuant to A 113(1) the decisions of the EPO may only be based on grounds on which the parties concerned have had an opportunity to present their comments. This [provision] obliges the EPO to grant the right to be heard. As is generally accepted, the right to be heard has been violated when the OD has ignored submissions or has not taken them into account in its decision, or when it has used knowledge (Erkenntnisse) on which a party to the proceedings has not had an opportunity to present comments.

[5.3] The latter case may entail the duty to inform a party (Hinweispflichten), in particular when the party cannot see which facts it has to comment on in order to succeed. This duty may differ depending on the type of proceedings. As far as opposition appeal proceedings are concerned, the EBA has considered that post-grant opposition proceedings under the EPC are in principle to be considered as contentious proceedings between parties normally representing opposite interests (see G 9/91 [2]), which entails greater responsibility of the parties for the completeness of their submissions. There may be a duty to inform [a party] on obvious and easily remediable cases of incompleteness. [However,] the opponent itself is responsible for the comprehensibility of its submissions concerning the substantive requirements for patentability.

[5.4] In the present case the OD has only examined the submissions of the opponent and has found them inconclusive. Even if it had made an error, which is not the case, this would not amount to a procedural violation bit only an erroneous application of the substantive law. The OD is not allowed to base its reasoning on facts on which the opponent has not had an opportunity to present its comments, but it has not done so.

[5.5] A party to the proceedings cannot present its comments when it has not been given enough time to do so. In this context the [opponent] points out that

• the decision of the OD had been handed over to the postal service on February 2, 2009, although the written submission of the patent proprietor was deemed to have been delivered on January 2, 2009, pursuant to R 126(2);
• the time between December 24 and January 7 is generally considered to be a holiday season; and
• the requests under consideration were complex, involving auxiliary requests, a case where T 263/93 had found that a minimum time limit of two months was necessary before taking a decision.

[5.6] These submissions do not provide evidence for a violation of the right to be heard, either. The written submission of the patent proprietor dated December 17, 2008, was posted on December 22, 2008. Pursuant to R 126(1) this written submission is deemed to have been received on January 1, 2009, and, as this is a day on which one of the filing offices of the EPO is not open […], on the following day (R 134(1)), here Friday, January 2, 2009. The decision is dated February 6, 2009; sheet 2 has the annotation “to the postal service on 02.02.2009”. This raises doubts on whether the decision was taken on February 6, 2009, or already on February 2, 2009. The question of whether February 6, 2009 is the correct date of the decision, because the transmission of the decision could have been stopped until this date, may be left open, because even if the decision was taken on February 2, 2009 the opponent’s right to be heard was not violated.

The written submission of the patent proprietor was sent to the [opponent] for information. It did not contain an invitation to comment. In such a case the [opponent] had to assume that a decision was imminent, because this way of proceeding necessarily means that the OD considered the case to be ready for a decision (entscheidungsreif) and that the submission of the patent proprietor was irrelevant (keine Rolle spielt) as otherwise the OD would have given the opportunity to comment. In such a situation the [opponent] has to approach the OD and either to make further factual submissions or – exceptionally – announce such factual submissions to be made within an appropriate time limit. The waiting period to be kept by the OD only depends on these requirements. In this situation, one month – as here (legal fiction of delivery : January 2, 2009, earliest date of decision: 2 February, 2009) – was certainly sufficient.

The Board is of the opinion that in this situation it is not relevant whether the submission of the patent proprietor, which has not been taken into account by the OD, was complex. If the submission was found to be complex, then a careful representative will at least request the possibility to comment before the OD.

What is more, the Board is of the opinion that the factual submissions were not complex. As a matter of fact, [the opponent] has not provided reasons why it found the submissions complex. In any case, the mere existence of an auxiliary request – without any discussion of its contents – cannot justify the allegation of complexity.

[5.7] Moreover, it is irrelevant that the period from December 24, 2008, to January 6, 2009 partially (i.e. from January 2, 2009 on) overlapped with the period between delivery and decision. It is true that there was an additional holiday on January 6, 2009. However, there is no provision and no generally admitted principle established by the [opponent] according to which working days had a particular status in this period. The period from December 23, 2008, the day of the real delivery, to January 1, 2009, precedes the occurrence of the deemed delivery (Zustellungsfiktion). A party has to bear the risk resulting from its practice not to sufficiently inspect the incoming post during the last working days of a year and the first working days of the following year.

Consequently, as there was no procedural violation, there cannot be a reimbursement of the appeal fee, be it only for this reason.

Referral to the EBA

[6.1] Pursuant to A 112(1)(a) EPC 1973, a Board of appeal shall, during proceedings on a case and either of its own motion or following a request from a party to the appeal, refer any question to the EBA if it considers that a decision is required in order to ensure uniform application of the law, or if an important point of law arises.

As far as the first alternative in which a referral is possible is concerned, the requirement of a non-uniform case law is not fulfilled. In decision T 914/98 the Board was of the opinion that the seventeen day period which elapsed between the appellants receiving the reply of the respondents and the handing over of the decision to the EPO internal postal service was manifestly too short to give the appellants an adequate opportunity for comment. Given the case law, the appellants could not reasonably have expected a decision to be issued so quickly. The question regarding what period of time is sufficient for this purpose is a question of fact which has to be answered on the basis of the merits of each individual case; see “Case Law of the Boards of appeal of the EPO”, VII.D.5.2.4. Therein several approaches are expressed, i.e. that as a rule, i.e. in the absence of any exceptional circumstances, an adequate period of time for presenting comments should not be shorter than the shortest possible period specified [by the EPO] for filing comments, i.e. two months, regardless of whether or not the action required within such a time limit is simple or can be performed immediately (T 263/93) and that in the case of a communication which was issued for information purposes only and which did not set a time limit for response, a period of one month was, as a rule, sufficient to comply with the requirements of A 113 in this respect. In another case in which difficult technical questions had to be considered, not even a time period of about one month was considered sufficient to give the appellant a realistic opportunity to inform the opposition division of its intention to file a substantive reply and to ask for an appropriate time limit for this purpose, let alone to present substantive comments (T 263/93). However, all these decisions are based on different factual evaluations which cannot be answered as if there was an abstract legal question.

[6.2] As there is no legal question, the requirements of the second alternative of A 112(1)(a) are not fulfilled, either. Moreover, it has to be noted that even an important point of law does not require a referral if the Board if it can resolve it itself without any doubt (see “Case Law of the Boards of appeal of the EPO”, VII.E.14.2), because the interpretation of the EPC is primarily the responsibility of the Boards of Appeal (see G 3/08 [7.2.5]). The present questions do not raise doubts; the Board is of the opinion that they are clearly to be answered in the way exposed above.

Therefore, no question will be referred to the EBA.

To avoid that kind of bad surprise, be sure to request oral proceedings when you file an opposition.

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The file wrapper can be found here.

Another decision on this topic is found here.

More on quick decisions can be found here.