T 1050/09 – You Can’t Rely

Imagine two parties before the Opposition Division (OD). Only the opponent has (unconditionally) requested oral proceedings (OPs) to be held. The request has been filed together with the notice of opposition:

The OD has informed the parties that it intends to revoke the patent but still the patent proprietor has not requested OPs. Does the OD commit a substantial procedural violation if it revokes the patent without appointing OPs? In other words, can the patent proprietor rely on the request made by the opponent?

E-III 2 of the Guidelines, which deals with OPs to be held at the request of a party, has something to say on that topic:

“… If the competent department considers that a decision on the matter may be reached on the basis of the written evidence obtained and intends to take a decision (e.g. in accordance with A 97, A 101 or A 105b) which fully concurs with the case put forward by the party or parties which requested the OPs, the party or parties concerned should be informed accordingly and asked whether the request or requests for OPs will be maintained even though the decision concurs with the case put forward; this will not apply if the party concerned has indicated that the request for OPs has been made solely as a precaution to cover the eventuality of the case put forward by him not being accepted. If the request is not expressly withdrawn, OPs must be held.” (my emphasis)

In the present decision the Board deals with such a situation. However, in contrast to what the Guidelines provide, the OD had not asked the opponent whether it maintained its request and had revoked the patent without any OPs.

The patent proprietor pointed out that it could rely on the request of the opponent; accordingly, the failure to appoint OPs was a substantial procedural violation, as established in particular by T 795/91.

The Board does not agree:

[2] In deciding to revoke the patent the OD did not commit a substantial procedural violation.

The right to OPs regulated by A 116(1) forms a substantial part of the right to be heard granted by A 113(1). From this it follows that non-compliance with a request for OPs deprives the party of an important opportunity for presenting his case in the manner he wishes and using the possibilities open to him under the EPC (see T 209/88 [4.3]).

A 113(1), however, does not confer a formal position on a party to proceedings before the EPO but serves to ensure fair conduct of those proceedings. A successful party has no reason to doubt the correctness of the procedure leading to the decision in its favour. In accordance with the established case law of the boards of appeal (see Case Law, 6th edition, chapter VI.C.2.) the board consequently states that in the case of a request for OPs by a party the OD has no power to issue a decision adversely affecting such party without first appointing OPs (see T 686/92 [3]; T 795/91 [3]).

In the present case, however, in view of the positive conclusion in favour of the opponent the OD had reached regarding the question of novelty (see its communication dated 23 May 2008), OPs at the unconditional request of the opponent would have served no purpose. The OD thus treated the opponent’s request for OPs as merely conditional in accordance with A 113(1) and A 116(1) (see T 494/92 [2]).

As stated above, it is true that a party to proceedings before the EPO has the right to present its case in the manner it wishes and using the possibilities open to it under the EPC. The party’s right to OPs, however, is subject to a clear request for such proceedings. With communication dated 23 May 2008 the OD informed the parties of its opinion that claim 1 was not novel and that revocation of the patent could be expected. Having received this communication without summons to OPs it was up to the [patent proprietor] to make a clear request for OPs. The OD had no reason to investigate the proprietor’s motivation with regard to procedural requests made by the opponent.

I wonder whether the patent proprietor should have invoked the principle of legitimate expectations, in view of the text of the Guidelines and the absence of an explicit withdrawal of the request on behalf of the opponent.

To read the whole decision, click here. The file wrapper can be found here.