T 433/08

The present decision reminds us that even if the first instance has committed a substantial procedural violation, this does not mean that the appeal fee will be reimbursed.

Both the patent proprietor and the opponent had filed an appeal after the Opposition Division (OD) had maintained the patent in amended form.

When the auxiliary request was examined, the opponent pointed out that the request was not inventive over document D2. The OD referred to document E2, which had already been cited in the examination proceedings, and decided to use it as the closest prior art rather than D2. It finally found the auxiliary request to be inventive over E2.

[14.1] According to R 103(1)a), “the appeal fee shall be reimbursed … where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation” (emphasis added).

[14.2] In the reasons given in the decision under appeal, the OD relied on document E2, which document had not been referred to at all in the course of the opposition proceedings before the issuance of the decision to maintain the patent in amended form.

[14.3] This course of action is in breach of the requirements of A 113(1), which stipulates that “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”.

[14.4] It was common ground between the parties that a procedural error had occurred. They had, however, diverging views as to the equitability of a remittal and/or reimbursement considering the particular circumstances of the case.

[14.5] Concerning the given circumstances, the board notes on the one hand that although document E2 had been cited as relevant prior art in the substantive examination of the case, the opponent chose not to invoke it in the opposition proceedings. However, even though it could thus be assumed that the opponent considered this document to be less relevant than the other documents which it relied upon, this does not in itself empower the OD to use as a basis for the decision a document not having been referred to at all in the opposition proceedings.

[14.6] On the other hand, the OD considered document E2 to be the closer prior art, and hence to be more relevant for the assessment of inventive step and for a potential denial of inventiveness, than those cited by the opponent. The OD would not have reached a decision more favourable to the opponent (and less favourable to the patent proprietor) if it had not taken into account document E2. Thus, the OD did not act to the detriment of the opponent […]. Such detriment was not even asserted by [the opponent]. Indeed, with its letter setting out the grounds of appeal, [the opponent] submitted document E2/E2’ of its own volition as advantageously supporting its request to revoke the patent in suit as a whole.

[14.7] Moreover, it is to be noted that the board, in the present decision, (also) considered that an inventive step attack based on a combination of document D2/D2bis as closest prior art with document D1bis could not succeed […], contrary to the arguments of [the opponent] brought forward in the opposition proceedings.

[14.8] Under these circumstances, the board concludes that by this course of action the rights of [the opponent] were not curtailed to an extent that would make the reimbursement of its appeal fee equitable by reason of a substantial procedural violation.

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