T 1607/08 – Stick To The Guidelines

This is an appeal against the revocation of the opposed patent.

The opposition had been filed on November 15, 2006.

The opponent had withdrawn its opposition on March 1, 2007, i.e. before the time limit for filing observations or amendments under R 57(1) EPC 1973 (now R 79(1)) had expired.

On March 20, 2007, the patent proprietor requested maintenance of the patent as granted.

By decision dated March 3, 2008, the Opposition Division (OD) revoked the patent.

The Board set aside this decision, for the following reasons:

[1] Under the provisions of R 60(2) EPC 1973 the opposition proceedings may be continued by the EPO of its own motion in the event of the death or legal incapacity of an opponent. The same shall apply when the opposition is withdrawn.

[1.1] The Guidelines (Part D, Chapter VII, point 6.2, last paragraph, of the December 2007 version) state that “[t]he proprietor of the patent and any other parties are to be informed that the proceedings will be continued. Otherwise the proceedings are closed and the decision to close the proceedings is communicated to the parties”. This section of the Guidelines, published before the date on which the decision under appeal was taken, refers to new R 84(2), which has the same wording as R 60(2) EPC 1973.

[1.2] In the present case, the decision to revoke the contested patent was issued without any previous information being given to the patent proprietor as to the continuation of the proceedings which means that the OD did not follow the aforementioned provisions of the Guidelines, although it cannot be derived from the documents of the file what the reasons for departing from them were.

[1.3] The appellant argued that acting in such a way amounted to a violation of the principle of the protection of legitimate expectations, which had led to a violation of his right to be heard (A 113(1)). In essence, the reasoning developed by the appellant is as follows:

• when the opponent withdrew his opposition the period of four months open to the patent proprietor to file observations and amendments, where appropriate, was still running;
• the then patent proprietor considered that this time limit had been annulled due to the withdrawal of the opposition; that was the reason why he sent, as a precautionary measure, only a brief letter by which he formally requested the maintenance of the patent as granted;
• he legitimately expected that the OD would first decide on the continuation or closure of the proceedings and would give him the opportunity to file observations in case of continuation;
• he could not expect that a decision revoking the patent would be issued about one year after the withdrawal of the opposition without any comments on his part on the merits of the grounds for opposition.

[2] The principle of the protection of legitimate expectations, also referred to as the principle of good faith, generally recognised among the Contracting States, is also a well established principle in proceedings pursuant to the EPC. Its application to procedures before the EPO implies that measures taken by the EPO should not violate the reasonable expectations of the users of the European patent system (see the decisions of the Enlarged Board of Appeal G 5/88, G 7/88, G 8/88; G 2/97 [1]).

[2.1] It is established case law that the Guidelines published by the EPO are one of the sources of legitimate expectations (T 905/90 [5]; followed in J 25/95, J 24/95, J 14/95, J 15/95, J 16/95, J 17/95; J 27/94 [5]).

Therefore, where the Guidelines give the clear indication that the continuation of the opposition proceedings has to be communicated to the patent proprietor, the latter is entitled to expect that such information will be given before a decision on the substantive issues is issued.

Otherwise, as in the present case, the decision to revoke the contested patent comes to the surprise of the patent proprietor.

[2.2] Contrary to the principle applying to the boards of appeal, which are not bound by any instructions (A 23(3)), parties can expect the departments of first instance to follow the general instructions in the existing Guidelines, although a department of first instance may depart from them in exceptional cases (see the Guidelines, General Part, point 3.2).

The board considers that departing from the Guidelines in exceptional cases has to be justified by reasonable and clear grounds, such as particular circumstances which lead to a conflict with relevant legal provisions. Such grounds are not apparent in the present case since the Guidelines give a general instruction for the withdrawal of a sole opposition and R 60(2) EPC 1973 does not provide a clear basis for departing from this general instruction in the present case.

[2.3] In the present case the failure to comply with the published instructions was the cause of the revocation of the patent in so far as the patent proprietor legitimately expected to be given an opportunity to present observations on the merits of the grounds for opposition after being informed of the continuation of the opposition proceedings.

[2.4] It is true that the patent proprietor was given the opportunity to comment following the communication of the notice of opposition at the very beginning of the proceedings, a possibility he did not make use of during the four-month period. This opportunity was not curtailed by the communication of the withdrawal of the opposition. In particular, there is no justification for understanding that the period was cancelled, as considered by the appellant.

[2.5] Nevertheless, the circumstances of the withdrawal explain why the patent proprietor did not consider it worth preparing an exhaustive answer before having received the information of the continuation of the opposition proceedings ex officio. In particular, there was only one opposition and its withdrawal occurred while the period for replying was still running, such that the withdrawal could have led to the termination of the opposition proceedings without the patent proprietor’s comments as to the merits of the opposition. Moreover, the patent proprietor in the present case had not presented any requests for amendment of the patent and the Guidelines led him to believe that he would be informed whether the opposition proceedings would be continued.

[2.6] In this situation, the patent proprietor’s expectations were especially justified as the Guidelines (Part D, Chapter VII, point 6.2, second paragraph, of the December 2007 version) state that “[t]he OD should continue the proceedings if, for instance, the proprietor of the patent has submitted amendments to the patent in response to the notice of opposition ...” or “if it considers that the stage reached in the opposition proceedings is such that they are likely to result in a limitation or revocation of the European patent without further assistance from the opponent(s) concerned and without the OD itself having to undertake extensive investigations ...”. In the present case, as already explained, the proceedings were in the very first stage and no amendment had been submitted in response to the notice of opposition.

[2.7] The patent proprietor’s letter dated 20 March 2007, despite its brevity and laconic nature, was clear as to the patent proprietor’s requests. Even if the OD had considered that the patent proprietor had no interest any more in the maintenance of the patent, such an assumption did not relieve the OD of its duty to communicate its intention to continue the proceedings, and thereby clarify the procedural situation. Such a communication would have given the patent proprietor an opportunity to react (which, in the present case, would have been a further opportunity, see point [2.4] above).

[3] Thus, the revocation of the patent is the direct consequence of the procedural violation of the principle of the protection of legitimate expectations. In the present case, in which this violation led to the decision to revoke the contested patent and came to the surprise of the patent proprietor, this constitutes a substantial procedural violation.

[3.1] Consequently, the contested decision is to be set aside and the case remitted to the department of first instance for further prosecution (Article 11 RPBA, OJ EPO 2007, 536).

[4] In accordance with the provisions of R 67 EPC 1973 the board considers it equitable, on account of the circumstances set out above, to order the reimbursement of the appeal fee.

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