T 36/11 – An All Too Sudden End

When an opposition is withdrawn, the Opposition Division (OD) can continue the proceedings of its own motion. But it does not have to, even if the patent proprietor would prefer to keep the proceedings alive.

An opposition had been filed on February 3, 2010 by Deutsche Telekom, but two weeks later the opponent withdrew the opposition.

The OD informed the patent proprietor of the withdrawal (on March 1) and then invited him to file his observations with respect to the notice of opposition (on March 12).

The proprietor filed observations on September 10.

On November 25, he was informed that the OD had decided to discontinue the proceedings.

He then filed an appeal against this decision.

The Board found this appeal to be inadmissible:

[1.1] In accordance with A 107 and R 101(1), one of the requirements for an appeal to be admissible is that the appellant is adversely affected by the decision under appeal. In the present case, this requirement is not met for the following reasons:

[1.2] In its reply dated 10 September 2010 to the communication issued by the OD, the proprietor requested that the opposition be dismissed. In support of its request, for each one of the claims as granted, the proprietor submitted arguments against the opponent’s arguments as set out in the notice of opposition in support of lack of novelty and/or lack of inventive step. Apart from a conditional request that oral proceedings be held, the proprietor did not submit any further requests.

[1.3] From the reply it can thus unambiguously be derived that the proprietor requested that the opposition be dismissed and, hence, that the patent be maintained as granted.

[1.4] By deciding to discontinue the opposition proceedings, the OD fully acceded to this request, since the decision had the immediate consequence that the patent was maintained as granted. In this respect, it is not relevant whether or not the order of the decision literally corresponds to the proprietor’s request. In the board’s view, what is decisive is that the substance of the decision given in the order fully accedes to the request, which in the present case is that the patent be maintained as granted.

[1.5] In the statement of grounds of appeal, the appellant argued that it was adversely affected by the decision, since, notwithstanding the opponent’s withdrawal, the EPO had invited the proprietor to file its observations, which was taken by the proprietor as a clear indication that the EPO planned to continue the opposition procedure of its own motion. Further, since it was evident to the proprietor that the EPO was going to examine the facts of its own motion, the appellant assumed that the further prior art as filed with the reply would also be considered and examined. Issuing a decision to maintain the patent as granted only after an examination of this prior art would have led to “the needed clarity on this patent, in the interest of the public and all parties involved”.

[1.6] These arguments are not convincing for the following reasons: With the communication dated 12 March 2010 the proprietor was invited to file its observations. This invitation cannot be interpreted as indicating that the proceedings would be continued. For example, a reply in which the proprietor were to submit that, in view of the withdrawal of the opposition, the opposition proceedings were to be discontinued, would have been fully compatible with the content of the communication. As to the prior art documents filed with the reply, the board notes that in the accompanying letter reference to these documents is only to be found at points II. 3 and 4, which read as follows:

“3. For the sake of completeness, Patentee submits as further items of prior art Exhibit E 10: Patent JP-03-244224 including English abstract and English claims Exhibit E 11: Patent JP-2001-197551 including English abstract and English claims and also machine translation of claims and description These items of prior art were cited by the Japanese Patent Office during examination of a Japanese family member of the patent in suit.

4. Furthermore, Patentee submits the following items of prior art which were cited by examiners of the USPTO during examination: Exhibit E 12: US6088002 Exhibit E 13: US20030003959”

In the board’s view, these submissions do not imply that the proprietor made a request that the opposition proceedings be continued and, more specifically, that the cited prior art documents be considered and examined by the OD. Nor do they imply or suggest that an examination of these documents would lead to “the needed clarity on this patent, in the interest of the public and all parties involved”.

[1.7] The board further notes that under A 113(1) the decisions of the EPO may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments. This procedural right is intended to ensure that no party is caught unawares by reasons given in a decision turning down its request on which the party has not had the opportunity to comment. In the present case, since the opponent had withdrawn its opposition, the proprietor was the only remaining party to the opposition proceedings. Further, from the decision under appeal it follows that the OD had no cause to continue the proceedings of its own motion as the dossier stood at the time (see point II above). If the OD had considered that the stage reached in the opposition proceedings was such that they were likely to result in a limitation or revocation of the patent without further assistance from the opponent and without the OD itself having to undertake extensive further investigations, it should have continued the proceedings (cf. R 84(2), Guidelines, D-VII, 6.2 and 6.3).

In the present case, this situation apparently did not occur and, analogous to the case in examination proceedings in which the examining division is not obliged to issue a communication in which its reasons as to its positive findings on the grant of a patent are set out, the OD was not obliged to communicate to the proprietor the reasons as to its positive findings on the maintenance of the patent as granted in order to comply with A 113(1). Hence, there was no violation of the right to be heard, which might otherwise have adversely affected the proprietor.

[1.8] Since the decision corresponds to and is fully consistent with the proprietor’s unambiguous request at the time and the board sees no other reason why the proprietor would have been adversely affected at the time the decision was delivered, the board concludes that within the meaning of A 107 the proprietor was not adversely affected by the decision.

[1.9] Consequently, the appeal is to be rejected as inadmissible, A 107 and R 101(1).

I understand that if the patent proprietor had responded by filing a main request limiting claim 1 of the patent before the OD terminated the proceedings, the OD could not have acted as it did - or, if it had done so, the appeal would have been admissible.

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