Wednesday, 20 November 2013

T 109/11 – Just Words

In this appeal against the decision of the Opposition Division (OD) to reject the opposition, the Board had to deal with a situation where the impugned decision was based on a wrong legal basis.

*** Translation of the German original ***
[2] In the present case the notice of opposition has been filed before the entry into force of the revised EPC, i.e. on August 24, 2005. Thus the assessment of the admissibility of the opposition has to be based on the legal provisions of the EPC 1973, because the admissibility of a procedural act has to be assessed on the basis of the law that is applicable at the time of the act (cf. J 10/07, T 1366/04, T 1279/05). Therefore, in the present case the relevant provision for answering the question whether the opposition is admissible is R 55(c) EPC 1973.

[3] The OD, however, has not carried out the assessment of admissibility according to the provisions of the EPC 1973 but has based it on R 76(2) EPC 2000 […] and has rejected the opposition pursuant to R 77(1) EPC 2000. Therefore, the [opponent] has asked [the Board] to set aside the impugned decision, which is based on the EPC 2000, because the wrong legal provisions have been applied. Moreover, it has filed an auxiliary request for a referral to the Enlarged Board of appeal in case the OD did not set aside the decision for the above mentioned reason.

[4] The Board is of the opinion that the request of the [opponent] is founded in this respect because the decision is based on the revised EPC, i.e. it is based on a legal basis that is not applicable to the question of whether the opposition under consideration is admissible. Therefore, the impugned decision in any case suffers from a formal deficiency that has to lead to the decision being set aside. The appeal has to be allowed in this respect, i.e. the impugned decision has to be set aside. Consequently, there is no need to decide on the request of the [opponent] for a referral to the EBA, which was only filed in case the decision was not set aside […].

[5] The impugned decision having been set aside, the question remains whether it is appropriate to remit the case for further processing by the first instance, as requested by the [opponent], or whether the Board should make use of its power to act within the competence of the first instance department, i.e. to decide itself on the case (cf. A 111(1)).

[6] In this context it has to be taken into account that the decision of the OD was to be set aside because of a formal deficiency, i.e. the application of the wrong legal basis. However, the fact that the DO has wrongfully based [its decision] on the provisions of the revised EPC does not necessarily mean that the decision is […] mistaken on substantive grounds (sachlich fehlerhaft). As a matter of fact, many legal provisions of the EPC 1973 and of its Implementing Regulations have been maintained unamended as to their content or have only undergone editorial changes. The Board is of the opinion that a remittal to the first instance for a fresh assessment of the admissibility of the opposition would only be justified if the criteria for assessing the substantiation of an opposition were different under the revised EPC as compared to the EPC 1973.

[7] Pursuant to A 99(1), first sentence, EPC 1973 the opposition has to be substantiated within the time limit for filing an opposition. According to R 55(c) EPC 1973 the notice of opposition has to contain:
(a) a statement of the extent to which the European patent is opposed, and
(b) of the grounds of which the opposition is based, as well as
(c) an indication of the facts and evidence (Tatsachen und Beweismittel) presented in support of these grounds.

If the opposition does not meet these requirements, it has to be rejected as inadmissible pursuant to R 56(1) EPC 1973, regardless of the stage of the proceedings (T 289/91). In the present case there is no doubt that requirements (a) and (b) have been met. Therefore, in the first instance proceedings the question of admissibility focused on the discussion of requirement (c), but on the basis of R 76(2)(c) EPC 2000.

[8] First of all it has to be noted that the German wording of R 76(2)(c) EPC 2000 is not different from that of R 55(c) EPC 1973. Both provisions provide in the last half sentence, which is decisive for the present case, that the “facts and evidence presented in support of these grounds” have to be indicated. However, there have been changes of the wording of this half sentence in its English and French version. The English version of the EPC 1973 required [the opponent] to indicate “facts, evidence and arguments”. In the corresponding wording of the revised EPC the term “arguments” was deleted, apparently to bring it in line with the German version. The French version of the EPC 1973 provided that [the opponent] had to indicate “the facts and justification (les faits et justifications)”. The French version of the revised EPC, however, replaces the term “justification” by “evidence” (les preuves), apparently in order to align the wording with the German “Beweismittel” and the English “evidence”. In view of these amendments and the fact that the wording of the German version has remained unamended, the Board has reached the conclusion that the amendments of the French and English versions apparently serve the purpose of harmonisation of the different language versions but that the requirement of substantiation, according to which the “facts and evidence presented in support” [of the grounds for opposition], which is enshrined in R 55(c) EPC 1973, last half sentence, has remained the same as to its substance (inhaltlich unberührt). Thus the fact that the OD has wrongfully based its decision on R 76(2)(c) EPC 2000 should not have affected the decision as to its substance.

[9] As the first instance discussions have already been based and centred on the legal requirements which are decisive for the question of substantiation, the Board considers it to be appropriate not to remit the case to the first instance and to decide on the case itself.

We will have more on this decision tomorrow.

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

The file wrapper can be found here.