Monday, 10 December 2012

T 563/11 – The Silence Of The Caterpillar

This is an appeal against the rejection of an opposition.

At the end of the oral proceedings (OPs), on October 18, 2006, the Opposition Division (OD), in which Lars N. acted as first examiner, declared that the proceedings would be continued in writing.

In a written submission dated December 15, 2006, the opponent provided evidence that the original opponent (Bitelli) had been replaced by its legal successor (Caterpillar Prodotti Stradali).

More than three and a half years after the OPs, on May 19, 2010, the OD requested the parties to state, within a four-month period, whether they requested new OPs in view of the fact that the composition of the OD had changed. Unfortunately, this communication was not sent to the opponent.

The patent proprietor declared that it did not request new OPs. This declaration was sent to the opponent, who did not react.

The OD, in its new composition – comprising Flores H. acting as first examiner – then rejected the opposition.

Unsurprisingly, the Board found that the OD had committed a substantial procedural violation.

*** Translation of the German original ***

Omission to deliver the communication of May 19, 2010

[2.1] Considering the course of the opposition proceedings and the file records that are available in the present case, the Board understands that it was the intention of the OD to inform both parties (R 126(1),(2)) of the change of composition (A 19(2)).

However, the corresponding communication dated May 19, 2010, which had been prepared and which can be proven to have been delivered to the patent proprietor, was not delivered to the opponent, because the internal registry contains a record according to which a registered letter dated May 19, 2010, was sent to the patent proprietor, but there is no record of a corresponding letter to the opponent. Thus the statement of the opponent that it had not received the communication has to be considered correct.

As a consequence, the opponent was not enabled to react to the communication within the time limit.

Thus the opponent could not make use of its right to new OPs before the OD and had no opportunity to present its arguments to the OD in its new composition before the written decision was issued.

Substantial procedural violation

[2.2] According to the established case law (e.g. T 862/98 [headnote] of Board 3.4.02 or T 960/94 [3] of Board 3.3.04) the above procedural violation constitutes a substantial procedural violation consisting in a violation of the right to be heard within the meaning of A 113(1) together with A 116.

The right to be heard has been violated through the signature of the written decision dated December 29, 2010, by a person (the first examiner) who had not attended the OPs on October 18, 2006, and who, as a consequence, had not participated in the formation of the opinion of the OD regarding the inventive step involved in the claimed subject-matter, as recorded in the minutes.

As a matter of fact, the OD has acknowledged this problem and, therefore, in its communication dated May 19, 2010, has asked the parties to comment on whether they requested further OPs, but unfortunately, this communication was not sent to the opponent.

The violation of the right to be heard is a substantial procedural violation, and the [patent proprietor] has not contested this fact.

What is at dispute is whether the procedural violation was substantial to an extent that the case had to be referred to the OD or whether there were particular reasons pleading against a remittal.


Pursuant to A 111(1) the Board of appeal has the discretionary power to either decide on the case or remit the case to the department which was responsible for the decision. [The Board] has to remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance proceedings, unless special reasons present themselves for doing otherwise (Article 11 RPBA).

For the following reasons, the Board has come to the conclusion that the reasons which the [patent proprietor] has set forth do not speak against a remittal to the OD.

[3.1] There is no way that the indirect communication of a new factual situation, which took place when the response of the patent proprietor dated September 28, 2010, was delivered to the opponent on October 1, 2010, can replace, from a legal point of view, a direct communication and grant the right to be heard. The Board can accept the argument of the [patent proprietor] insofar as it points out that the opponent, exercising all due care that may, as a rule, be expected, should have reacted to the communication and should have gathered information on the procedural situation which apparently had changed, which might have allowed it to react on the issue of new summons to OPs before the issuing of the written decision of the OD.

However, on October 1, 2010, the four-month-period of the communication had already expired and the delivery of the decision took place shortly after that date. The fact that the opponent had not reacted cannot mitigate the existence of a substantial procedural violation consisting in a violation of the right to be heard to the extent that a remittal would not be required any more.

In this context the Board would like to point out that, regardless of whether the communication had been delivered, the silence of a party in response to such a communication of an OD cannot possibly be interpreted as an implicit waiver of the right of the party to have new OPs. In case of doubt the OD has no other option than summoning the parties to fresh OPs. This is what the OD should have done in the present case.

[3.2] As to the right to speedy proceedings (zügiger Verfahrensablauf), it applies to both the patent proprietor and the opponent in inter partes proceedings. Moreover, the fact that the opposition proceedings have lasted for about seven years was only due to the lack of action (Nicht-Handeln) of the first instance and not to any delaying tactics (Verzögerungsmanöver) on behalf of the adverse party. As far as the interest in having the opposition processed in a speedy manner is concerned, the file shows that over the whole period from the end of 2006 to mid-2010 no party, not even the patent proprietor, has asked the EPO, the ED itself, or the competent formality officer, when the delivery of the written decision was to be expected.

[3.3] Nor can the Board endorse the opinion of the [patent proprietor] according to which the case law of the Boards of appeal would exclude a remittal in a case where there was only a substantial procedural violation resulting from the change of composition of an OD.

In case T 960/94 [3] (also see the case law summary in Case Law, 6th edition, 2010, paragraphs VII.E.17.4.3 and 4.6, the Board decided to remit the case to the OD because of a substantial procedural violation of the same kind (A 113(1) together with A 116).

The decisions cited by the [patent proprietor] do not deviate from this established case law, not even T 862/98 of Board 3.2.04, where a remittal was based on several different procedural violations and not, as asserted by the [patent proprietor], because there was a combination of two or more deficiencies (see point [3.1] of the reasons).

[3.4] The fact that the case absolutely has to be remitted to the OD in the present case follows even more compellingly from the following considerations.

During an extremely long period, spanning from the OPs that took place on October 18, 2006, and the submission of the opponent on December 15, 2006, respectively, to the official communication dated May 18, 2010, and the notification dated May 19, 2010, respectively, the opposition proceedings were completely at rest, without there being any recorded or objectively determinable circumstances or declarations which could justify such a procedural delay of more than three years.

Irrespective of the above mentioned particularities of the course of the proceedings, the extreme delay between the OPs and the delivery of the written decision as such constitutes a substantial procedural violation (see e.g. T 358/10 [5.1] of Board 3.2.03).

The Board is not aware of any objectively verifiable reasons for the change of the first examiner.

However, under these circumstances it cannot be excluded that the change of composition if the OD was directly caused by the extremely long delay between the OPs and the written decision.

It may well be that more speedy processing of the opposition within a usual processing period (Bearbeitungsphase), once the legal situation of the opponent had been clarified, would have allowed to issue a written decision by the OD in its original composition, which then could have been signed by the three members before which the parties had made their submissions during the OPs held on October 18, 2006.

[3.5] The Board, having exercised its discretionary power, comes to the conclusion that in view of the circumstances of the present substantial procedural violation the reasons submitted by the [patent proprietor] do not stand in the way of a remittal to the first instance.

[4] As a consequence, the reimbursement of the appeal fee is equitable within the meaning of R 103(1).

[5] Consequently, the question whether the impugned decision has to be maintained on substantive grounds does not need to be decided here.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.


Anonymous said...

And there it goes for the next seven years ...

Roufousse T. Fairfly said...

The board seems to have overlooked another apparent deficiency of the attacked decision: it was signed by three examiners, but its cover mentions four names, including a jurist from DG5.

I'm not sure whether the discrepancy between both forms stem from a software bug, or because the forms were prepared at different points in time. I wonder which of the computer database or the physical file cover are authoritative.

I think that what might have happened is that the division might have tried (too) hard to avoid a procedural error, and requested its augmentation when there was a doubt as to the status of the opponent. How long the fourth member stayed on board, and whether you can reduce it back to three members isn't clear to me.

There is a slight irony: because there was a doubt about the identities of one of the parties, the identities of the members of the division changed. If there hadn't been this problem at the OPPO OP a decision would probably have been pronounced back in 2006.