In this case the opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the opposed patent in amended form.
The Board found claim 1 of the request on file not to comply with the requirements of A 84 and decided to revoke the patent; it then considered whether the appeal fee should be reimbursed.
[4] The Board considers that a reimbursement of the appeal fee in accordance with R 67 EPC 1973 is not equitable by reason of a substantial procedural violation in the present case because an error of judgement has occurred in first-instance proceedings which, however, is not a procedural violation within the meaning of said provision (see also “Case Law”, 6th edition 2010, VII.E.17.4.5).
The OD referred to decision T 1002/92 and found the opponent’s objections based on R 80 and A 123(3) EPC to be inadmissible since both objections had not been substantiated. In appeal proceedings, the [opponent] has not disputed that its objections under R 80 and A 123(3) had not been substantiated in first-instance proceedings. Nor has the [opponent] contended that it had been hindered by the OD from substantiating its objections during the oral proceedings (OPs) before the OD.
In decision T 1002/92 [3.3], the Board of Appeal held that, “following the principles set out in Opinion G 10/91, as regards proceedings before the ODs, late-filed facts, evidence and related arguments, which go beyond the “indication of the facts, evidence and arguments” presented in the notice of opposition pursuant to R 55(c) in support of the grounds of opposition on which the opposition is based, should only exceptionally be admitted into the proceedings by the OD, if prima facie, there are clear reasons to suspect that such late-filed material would prejudice the maintenance of the European patent” (emphasis added). Decision T 1002/92 [3.1] further states: “indication of the facts, evidence and arguments” in support of the stated grounds of opposition is often referred to as the “substantiation” of the grounds of opposition”.
It is clear from the impugned decision […] and the minutes of the OPs before the OD […] that the OD applied the afore-mentioned principles developed in decision T 1002/92 to the objections under R 80 and A 123(3) raised by the opponent against the amended claims filed by the Patentee.
In the board’s view, the OD erred when it applied the principles developed in decision T 1002/92. As regards the first-instance proceedings, it is clear from the reasoning in decision T 1002/92 that these principles concern the admissibility of late-filed facts, evidence and related arguments in support of a ground for opposition under A 100 EPC 1973 which go beyond the facts, evidence and arguments submitted in the notice of opposition in support of a ground for opposition under A 100 EPC 1973 (see in particular point [3.2], second paragraph, of the Reasons).
In the present case, however, the opponent’s objections were not raised in support of a ground for opposition under A 100 EPC 1973 but under R 80 and A 123(3) against the amended claims filed by the patentee. Thus the principles developed in decision T 1002/92 did not apply to the case which the OD had to decide.
However, as stated above, such an error of judgement does not amount to a procedural violation within the meaning of R 67 EPC 1973.
[5] According to the decisions cited by the [opponent], the OD should have considered the opponent’s new objections. Arguments have to be considered, whenever they were brought forward in first-instance proceedings (see decisions T 92/92, T 604/01, T 861/93 and T 131/01. In decision T 604/01, the board held that objections under A 123(2) and (3) which the opponent raised during the opposition proceedings but did not further explain until OPs could not be excluded under R 71a(1) EPC 1973 because these objections were a matter of argument. Further, pursuant to A 101(3)(a), taking into consideration the amendments made by the patentee, the patent and the invention to which it relates must meet the requirements of the EPC.
Thus in case of amendments of the claims of a patent in the course of opposition or appeal proceedings, such amendments are to be fully examined as to their compatibility with e.g. the provisions of A 123(2) and (3) (see G 9/91 [19]). Therefore, even if the opponent did not substantiate its submissions of lack of compliance with R 80 and A 123(3) EPC, the OD should not have decided that these new objections, filed with letter of 28 January 2008, were not admitted to the opposition proceedings.
However, it is clear from the impugned decision that the OD considered the patent as amended to fulfil the requirements of R 80 and A 123(3) EPC. Under these circumstances it is evident that the OD has examined the issue of R 80 and A 123(3) EPC ex officio.
[6] From the foregoing it follows that due to its error of judgement, the OD decided not to admit the opponent’s objections into the opposition proceedings. Hence a reimbursement of the appeal fee is not equitable in the present case. Thus the [opponent’s] request for a reimbursement of the appeal fee must be refused.
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