Monday, 21 November 2011

T 781/08 – No Clues Needed

When parties to opposition and appeal proceedings find opinions in the reasons for the decision which they would have liked to comment upon, they sometimes feel tricked and get in a lather. So the Enlarged Board has made clear (for instance in R 15/10)  that the Boards do not have to indicate their opinion before taking a decision. This principle also holds true for first instance decisions, as the present case shows.

Here the Board dismissed the opponent’s appeal against the decision of the Opposition Division (OD) to reject the opposition. As a consequence, it also refused his request for reimbursement of the appeal fee. The request for remittal was also refused, for the following reasons:

[3.2] The board also considered the question of whether the alleged violation was a substantial procedural violation justifying the remittal of the case to the department of first instance pursuant to Article 11 RPBA.

The appellant argued that its right to be heard (A 113(1)) had been violated because the OD did not inform the parties of its evaluation of the patent proprietor’s arguments prior to issuing the decision, even though a request for a written statement had been made by the appellant (then opponent).

[3.3] The board sees no procedural violation in the mere fact that the OD did not inform the opponent of its evaluation of the patent proprietor’s arguments prior to its decision. As stated explicitly in T 774/97 [2], A 113 requires that a decision should only be made on grounds on which the parties have had an opportunity to comment. If this opportunity is given by the written submissions from the parties without a communication from the OD there is no obligation to issue such a communication, even if a party requests one.

In the present case the appellant has objected that it did not have an opportunity to elaborate on the reasons given in the notice of opposition because it had not had an opportunity to respond to the OD’s perception of the case. However, contrary to what the appellant has alleged, the board cannot see that it was taken by surprise by the reasoning on which the decision was based, which in essence accepts the patentee’s counterarguments.

It is the responsibility of each party to present its arguments and counterarguments, bearing in mind that the purpose of any communication from the OD is merely to facilitate, and if necessary, to streamline, the discussion of the case. The absence of a communication in these circumstances does not amount to a procedural violation.

[3.4] The appellant argued that in accordance with decision T 849/03, taken by this board in a different composition, the right to be heard is not only violated if the grounds of a decision are not transmitted to the opponent prior to the decision, but also if the opponent cannot, at the given point of time, expect such a decision. The appellant submitted that after having requested a preliminary opinion of the OD and after a delay of three years after the patentee had filed its observations on the opposition, the decision of the OD could only be described as surprising.

The board does not accept this argument. In case T 849/03, which was ex parte, the examining division issued a decision after informing the applicant that they intended to call oral proceedings (OPs) as a second and final action if after the applicant’s response they did not find the case allowable. However, instead of appointing OPs the application was refused. The board considered that this was a substantial procedural violation as the appellant could have expected the examining division to summon to OPs as announced.

In the present case, no OPs were requested by the opponent nor were they conditionally announced by the OD. The argument of the opponent with respect to a lack of inventive step in the subject-matter of claim 1 of the patent based on D1 and the common general knowledge, was answered in the patentee’s first response in particular as regards feature 7. The appellant thus had ample opportunity to submit further observations after having received the patentee’s response. The OD by basing its decision on the written submissions of the parties did not go beyond the factual and legal framework determined by these submissions. Therefore, the appellant cannot claim that the content of the decision of the OD was surprising.

[3.5] For these reasons, the decision of the OD complies with the requirements of A 113(1).

To download the whole decision, click here.

The file wrapper can be found here.