T 1937/10 – Just A Question Of Strength

This decision –  on an appeal against the rejection of an opposition as inadmissible – reminds us that one has to distinguish between inadmissibility and unallowability.

[1.1] The notice of opposition is founded on the sole objection of lack of novelty against claim 1 of the contested patent, relying only on an alleged public prior use (D1 to D3) and a prior disclosure of that same device (D1, D3, D4). The inadmissibility of the opposition is based on the ground of insufficient substantiation, in particular with regard to the question of what has been actually disclosed […].

[1.2] The relevant requirements concerning substantiation of the opposition are set out in R 76(2)(c), according to which the notice of opposition shall contain a statement of the extent to which the European patent is opposed and of the grounds on which the opposition is based, as well as an indication of the facts and evidence presented in support of these grounds.

[1.3] It is clear from the EPO Form 2300 dated 28 November 2007 filed by the [opponent] that the opposition was filed against the patent as a whole (extent) and based on the grounds of A 100(a), namely lack of novelty and lack of inventive step (grounds). This is further confirmed by the notice of opposition itself. The first two conditions of R 76(2)(c) are therefore clearly fulfilled.

[1.4] With respect to the last condition (facts and evidence), according to the established case law the notice of opposition must indicate the “when”, “what” and under “what circumstances”, in particular “to whom”, the alleged public prior use was made available (T 522/94 [headnote IV, 10, 12, 20 to 25]; T 328/87 [3.3]).

[1.5] In the present case, the [opponent] cited documents D1 to D5 with its notice of opposition. D5 was merely cited for dependent claims, it is therefore not relevant for this decision. It indicated that a relevant device, as in D1, was made public to the attendees of a public seminar, i.e. to members of the public not bound by secrecy, held in Kemi, Finland on 23-34 March 1995 (circumstances and when). It filed D2 in this respect, constituted of a cover page, a programme page and a one page description of an AQS300 device with a picture and a drawing of this device.

The [opponent] argued in its notice of opposition that D1 discloses all the features of claim 1 except the features of the characterising portion. The latter features are alleged to be comprised in the device shown at the said seminar (what). D2 and D3 were filed as evidence to support this fact.

The same device was the subject of a prior disclosure in the article D4, showing the same picture as in D2. The photos D3 were filed as supporting evidence for this device as well.

In the light of these “what”, “when” and “what circumstances”, the [opponent] concluded that novelty of the subject-matter of claim 1 was not given.

[1.6] As indicated in T 597/07 [2.5] of the reasons, according to the established case law, “it is not required for an opposition to be admissible that the arguments brought in support are conclusive or that the opponent’s statements are true. What is required is that the patentee and the opposition division are put in a position of understanding clearly the nature of the objections and the evidence and arguments in support”.

It is further referred, for instance, to T 1022/99 [2.2] of the reasons, indicating that the facts - what, when, what circumstances of the alleged public prior use - must be indicated within the opposition period, while the evidence can be brought later in the proceedings as long as it is indicated.

http://www.epo.org/law-practice/case-law-appeals/pdf/t991022fu1.pdf

[1.7] Therefore, a distinction must be made between examining admissibility of the opposition and its substantive merit (see Case Law, 7^th edition 2013, chapter IV.D.3.3.3).

This distinction, contrary to the [patent proprietor’s] opinion, was not made in the impugned decision which appears to be focused only on assessing whether the [opponent’s] case of alleged prior use was conclusive and convincing.

[1.8] The [patent proprietor] holds the view that T 597/07 requires that the nature of the evidence is clearly understandable at the time when the opposition is filed and considers this element to be missing in the present case.

It argues that it is not unambiguously established that D2 and D3 are prior art documents. In particular, it is not clear whether page 3 of D2 actually belongs to D2 itself as there is no direct link between said page 3 and the first two pages (cover and programme of the seminar). With respect to D3, the pictures might have been taken on any device at any time and their link to the other documents D1, D2 or D4 merely relies on [opponent’s] allegations.

Even though the pictures look similar, the link between D2 and D4 is also missing and cannot be unambiguously established. Similarly, the link between D1 and D4 is unclear as there is no mention in D1 of the machine AQS300 of D4.

In fact, the notice of opposition merely alleges that D1 to D4 refer to the same device, without giving any evidence, however, how these documents are actually interrelated. The opposition relies on allegations without even indicating how these allegations could be proven.

Consequently, further investigations would be needed for the [patent proprietor] or the opposition division to clarify and understand the nature of evidence. That makes the opposition inadmissible.

[1.9] The Board cannot share the [patent proprietor’s] view for the reasons given during the oral proceedings and recited below.

The decision T 597/07 does not refer to the “nature of evidence” but rather to the evidence as such. The sentence quoted under point [1.6] above is to be understood as that the patentee and the opposition division are put in a position of understanding clearly:

• the nature of the objections and
• the evidence and
• arguments

in support, i.e. meaning that the “nature” only relates to the objections, not to the evidence itself as argued by the [patent proprietor].

Furthermore, D1 (its translation D1a), D2, D3 and D4 (for its introductory part that has been translated and its pictures) are understandable documents, D1 and D4 being indisputable prior art documents as admitted by the [patent proprietor]. What the evidence is alleged to be proving is explained by the [opponent] in the notice of opposition (see also point [1.5] above), in particular with respect to the sole alleged distinguishing feature of the characterising part of claim 1 over D1. This characterising part reads as follows:

“at least some of said upper log-receiving surfaces (16) or of said leading edge regions (18) comprise a plurality of projections projecting therefrom, said projections comprising an outermost contact region for contacting logs being transferred between said spaced locations, said contact regions being configured as a peak”

In the notice of opposition the [opponent] argued that this feature could be seen in the picture contained in D2, which was further alleged to be clarified by the photos of D3, alleged to have been taken on the same device as shown in D2. The same argument was brought forward regarding the identical picture in D4, relating to the allegedly same installation as discussed at the seminar (D2). The relationship between these documents is therefore sufficiently discussed.

When reading the notice of opposition, the nature of the objections (lack of novelty), the evidence (D1 to D4) and the arguments (interrelation between D1-D4) in support, i.e. the case the opponent tries to make, is therefore clearly understandable for the Board.

Whether the device of D1 was actually the same as presented at the seminar (D2) or was actually the same as discussed in D4, i.e. whether the [opponent’s] statements in the notice of opposition are proven or not, does not relate to the admissibility of the opposition but rather to its substantive merit. The same applies to the question whether D2 is the complete document and whether the photos of D3 relate to the device of D2 or D4 as it was alleged.

An opposition can indeed be found admissible on the basis of the statements, documents or copies thereof indicated in/filed with the notice of opposition which, later in the opposition proceedings, may eventually be considered incomplete, insufficient or simply wrong.

This, however, does not put the admissibility of the opposition into question. It only relates to the strength of the case.

Doubting whether documents cited in the notice of opposition are actually what they are alleged to be, as in the present case by the [patent proprietor] and the impugned decision, is an issue of merit of the opponent’s case, not of its admissibility.

[1.10] In view of the above, the Board considers that the notice of opposition meets the requirements of R 76(2)(c). Consequently, the opposition is admissible.

The Board then remitted the case for further prosecution.

Should you wish to download the whole decision, click here.

The file wrapper can be found here.

T 109/11 – Speed-Dating Is Dangerous

This decision also contains some interesting paragraphs on how oppositions have to be substantiated, in particular when non-patent documents are cited.

*** Translation of the German original ***

  

[10] According to the established case law of the Boards of appeal, the requirement that [the opponent has] to provide an indication of the relevant facts and evidence (R 55(c) EPC 1973, last half sentence) is only met if the relevant facts and evidence are indicated so that they allow the Opposition Division (OD) and the patent proprietor to correctly understand the grounds for opposition that are invoked and their validity (Stichhaltigkeit) without further investigations, so that they can comment on them (cf. T 2/89 and T 328/87). The requirement “indication of the facts and evidence presented in support of the grounds” has to be understood to mean all facts on which the opponent bases the request to revoke the patent. In other words, the justification (Begründung) of the opposition has to present the circumstances that are relevant for the assessment of the ground for opposition that is invoked. Which circumstances are relevant depends on the individual case and follows from the overall context (cf. T 222/85). It is not possible to remedy deficiencies after the expiration of the time limit for filing an opposition if the justification of the opposition is insufficient (see T 522/94). In order to meet the requirements of R 55(c) EPC 1973, last half sentence, it is sufficient if one ground for opposition is sufficiently substantiated. One single substantiated objection, such as for example the objection of lack of novelty based on one of the documents, is sufficient to reach this goal.

[11] In the present case the opponent has cited the grounds for opposition “lack of novelty” and “lack of inventive step” as well as the ground for opposition pursuant to A 100(c) EPC 1973 in the opposition form, but in the justification only the ground for opposition “lack of inventive step” was explained in more detail: document A1 (JP 58224226 A (Abstract)) was discussed in combination with documents A3 and A5. Point 3.2 of the notice of opposition also cites document A8 (DE 196 01 517 A1), but only in combination with the above mentioned documents, i.e. in connection with A1 and A3 and A1 and A5, respectively. Thus the indication of the facts and evidence presented in support of this ground within the meaning of R 55(c) EPC 1973 is limited to the objection of lack of inventive step.  The opposition form does not contain any explanations regarding the grounds for opposition “lack of novelty” and A 100(c) EPC 1973. However, this does not have any influence on the admissibility of the opposition, because the notion of inadmissibility pursuant to R 56 EPC 1973 only refers to the opposition as a whole. If the requirements regarding admissibility are met for at least one ground for opposition, the opposition is admissible as a whole (see T 212/97).

[12] The explanations of the [opponent] regarding substantiation essentially consists in the following chain of arguments:

(a) R 55 EPC 1973 does not provide that documents cited against [the opposed patent] have to be dated or that their date (Zeitrang) has to be indicated;

(b) even if there was a requirement regarding [their] date, the dates provided on the opposition form met this requirement;

(c) the above mentioned dates are to be understood as print dates – regarding these dates one had to assume a prior publication (Vorveröffentlichung) of documents A3 and A5;

(d) the question of whether there had indeed been a prior publication was only to be examined when the allowability of the opposition was examined.

[13] As far as the first objection is concerned, it has to be noted that the facts and evidence presented in support of the ground for opposition within the meaning of R 55(c) EPC 1973 have to be provided for each ground for opposition. The ground for opposition “inventive step” in any case requires the indication of the relevant prior art on which the assessment of the inventive step is to be based in the opposition proceedings. In the present case the ground for opposition “inventive step” is based on a combination of documents A1 and A3, A1 and A5 as well as document A8 which is cited in the context of combinations of A1 and A3 and A1 and A5, respectively.

As a rule there is no need for explanations regarding the fact that patent documents have been published at a certain date, i.e. have to be considered as prior art, because the documents themselves provide a reliable (gesichert) publication date. In the present case, this applies to documents A1 and A8 because they are classical patent documents. However, if documents that do not disclose a reliable publication date are cited, it is necessary to discuss in detail the question of whether they belong to the prior art, i.e. the question of the date and circumstances of their publication, which is fundamental for the ground for opposition “inventive step”. In the present case, the documents A3 and A5 are not patent documents which themselves provide a reliable publication date, but assembly instructions (A3) and a company brochure (A5). As a rule, such documents do not contain a date of publication but at best an encoded print date or a date related to the prior art taken into account in the document, or the editorial deadline (Redaktionsschluss). In such documents, which are not classical patent publications, the requirement of substantiation is, as a rule, only met if [the opponent] cites concrete facts from which one can derive that they have been made available to the public before the priority date (cf. Podbielski, in: Singer/Stauder, EPÜ, 6^th edition, A 99, marginal number 87, which cites further authorities). Thus the presentation of the facts has to be such that it can be understood without further ado when and under which circumstances the alleged prior publication has occurred.

Therefore, the first objection of the [opponent] cannot succeed.

[14] Regarding the second objection of the [opponent], the following should be noted: In the case under consideration the documents A3 and A5 have been designated as “Company brochure assembly instructions CERAPUR (Ju 1336/1) February 1996” (A3) and “Company brochure Vaillant Thermoblock Klassik Heating Value VC/VCW 196 E-C, August 1998” (A5).

There were no further explanations regarding the above mentioned dates and the circumstances of a possible prior publication within the time limit for filing an opposition. Thus the question arises whether the [opponent] has met its duty of substantiation as to when and how the cited documents A3 and A5 have been made available to the public. In this context it has to be noted that the [opponent] has dated these documents in the opposition form, i.e. “February 1996” for A3 and “August 1998” for A5 – but that it has not pointed out whether these dates were to be understood as print or publication dates. Moreover, it is to be noted that there are no explanations in the notice of opposition as to whether these dates were taken from the documents themselves or from which pieces of information, possibly contained in the documents, they were derived. The Board is of the opinion that the dates are not disclosed in the documents themselves. As explained in the decision of the OD, document A3 contains several combinations of letters and numbers that can be interpreted as indications of date. First, on the right upper corner of the cover sheet there is the indication:

Moreover, on the right upper corner of the cover sheet there is the indication:

And on the last page (page 34) in the middle of the right margin there is the indication “11/95”:

The notice of opposition only contains the date “February 1996” without any further discussion of or reference to the information contained in A3. It is only in its letter dated September 30, 2005, i.e. after expiration of the time limit for filing an opposition, that the opponent has explained that the indication “JU 1336/1, 6 720 603 928 (2.96) PC - Pf” referred to the print date. For the sake of completeness, it also has to be mentioned that in the course of the oral proceedings on May 17, 2013, the [opponent] has explained, in view of the indication on the cover sheet (“29.09.95”) that this was the date of clearance (Freigabe). The fact that a document that was allegedly printed in the year 1996 contains a clearance date of 1995 remains unexplained. In any case, it cannot be the clearance of the present document A3, which was said to have been printed in 1996.

[15] As far as A5 is concerned, it has to be noted that this document also contains several combinations of figures and letters that can be interpreted as indications of date. First, the upper right corner of the cover sheet and the bottom of the right margin of the last page both contain the indication

And the bottom of the right margin of the last page contains the indication “subject to change A/0898 87 6108”:

In its letter dated September 30, 2005, i.e. after expiration after the time limit for filing an opposition, the opponent has explained that the latter indication allowed to derive a print date of “August 1998”.

[16] In view of what has been said above, the Board of appeal (BoA) reaches the conclusion that because of the ambiguity of the letter-number combinations in documents A3 and A5 the dates provided in the opposition form cannot be unambiguously derived from the documents themselves. Moreover, even when taking account of the contents of documents A3 and A5 it was not apparent whether the opponent wanted these dates to be understood as print or publication dates. For this reason alone it would have been necessary to discuss in more detail the question of the dates of the above mentioned documents within the time limit for filing an opposition. Moreover, it should be noted that – even if the later submissions of the [opponent] are considered – the dates contained in the opposition form are only print dates. Thus, even the submissions of the [opponent] lead to the conclusion that the question of the date, which is relevant for the requirement of substantiation, and of the circumstances of the alleged prior publications has not been discussed (thematisiert) at all within the time limit for filing an opposition. Thus the BoA is of the opinion that for the above mentioned reasons alone there is a lack of substantiation resulting in the inadmissibility of the opposition.

[17] For the sake of completeness, however, the [Board] wishes to make the following comment on the third objection of the [opponent] (see point [12] above). The [opponent] is of the opinion that the dates mentioned in the notice of opposition are to be understood as print dates, and consequently one has to assume a prior publication of documents A3 and A5, and the opposition is sufficiently substantiated. First it has to be noted that, as mentioned above, the BoA does not endorse this approach, be it only because the dates provided in the opposition form were not unambiguously to be understood as print dates. But even if one assumes that the indication “JU 1336/1, 6 720 603 928 (2.96) PC - Pf” refers to the date on which A3 was printed – as alleged by the [opponent] – this does not say anything about the date of publication, which is decisive for the determination of the prior art. The BoA is of the opinion that in this context it also has to be taken into account that document A3 provides assembly instructions. Usually assembly and installation instructions are not properly “published” but are made available to the public together with the product that is to be assembled or installed (cf. T 511/02). The corresponding information cannot be deduced from A3 itself, nor does the notice of opposition provide any indication on possible sales of the product or a distribution of the assembly instructions related to such sales.

[18] As regards A5, it has to be noted that it apparently is a company brochure of the [opponent]. It is true indeed that, as a rule, a brochure that is directed at clients may be assumed to be distributed to potential customers shortly after the print date, so that the indication of the print date may be sufficient under certain circumstances (see T 597/07 and T 782/04). However, in the present case the BoA is of the opinion that it is necessary to take account of the fact that the opposition form only contains the indication “August 1998” without any further explanation whether the opponent  understands this date to be a date of print, of publication or an editorial deadline. Moreover, there is no indication as to whether this date was derived from information contained in the document itself. This, however, appears to be required in the present case because, as mentioned above, A5 contains several letter-number combinations which might serve as a basis for dating the document. However, even if the indication “subject to change A/0898 87 6108” on the last page of A5 is used and interpreted as a date, this date cannot be readily understood to be a print date. Rather, the indication “subject to change” suggests that this was intended to establish the editorial deadline or the prior art taken into account in the brochure. The Board is of the opinion that in the present case it also has to be taken into account that the patent under consideration claims a priority date of March 14, 1999, i.e. a date which is only about 8 to 9 months after the above mentioned date (“August 1998”). If one assumes that “August 1998” designates the prior art taken into account in the brochure or the editorial deadline, then one may not simply assume that [the document] has been published before the priority date because usually there is quite some time between the editorial deadline and the printing (Drucklegung) and a subsequent publication, which itself may be quite some time before the distribution of the brochures, irrespective of the configurations mentioned by the OD, where the distribution of printed brochures does not take place at all, for technical or economic reasons (deficiency of the product, lack of compliance with technical standards, infringements, etc.). In this context the [patent proprietor] has pointed out that it is not unusual that printed brochures are not published in cases where the technology develops quickly or where there is a deficiency of the product which leads to the production of distribution of the products being stopped.

[19] The date and the circumstances of the publication are decisive for the assessment of whether the documents A3 and A5 belong to the prior art and, therefore, whether they can be cited against the patent at all. Thus a presentation of the corresponding facts would have been necessary for the justification of the ground for opposition “inventive step” in the present case. For the above mentioned reasons the BoA is of the opinion that the indications of dates contained in the opposition form, which have not been explained at all, do not comply with the requirement of substantiation expressed in R 55(c) EPC 1973, all the more so as the documents do not provide any indications helping to understand the dates given in the opposition form.

[20] In the statement of grounds of appeal the [opponent] also pointed out that it was not relevant for the admissibility whether the indications regarding the publication of the documents were proven; [the opponent expressed the opinion] that this was related to the allowability of the opposition but not to be dealt with when its admissibility was examined.

[21] In this context it has to be emphasized that it is necessary to distinguish between the requirement of substantiation and the question of whether an assertion regarding facts (Tatsachenvortrag) is considered to have been proven. When substantiation is to be examined, all that has to be examined is whether the relevant facts and evidence are indicated so that they allow the Opposition Division (OD) and the patent proprietor to correctly understand the grounds for opposition that are invoked and their validity (Stichhaltigkeit) without further investigations and whether they are enabled to comment on them (cf. T 2/89 and T 328/87 . The BoA has carried out the examination accordingly; it had to examine whether the factual assertion regarding the date and the circumstances of the publication of A3 and A5 was sufficient. There was a need for such an assertion because the documents cited are not patent documents which themselves provide a reliable publication date. The mere indication of dates without any further explanation of whether these date are publication dates at all and without any explanation regarding the basis for the dating cannot constitute a sufficient assertion of facts, all the more as the documents do not unambiguously disclose these dates. Moreover, it has to be taken into account that dates that may be contained in such documents usually refer to an editorial deadline or a print date but not the date of publication. Therefore, in view of the nature of the documents, the dates provided on the opposition form needed further explanation, which means that the factual assertions did not comply with the requirement of substantiation in this respect. Thus, what matters is not whether the dates provided were to be considered to have been proven, but only whether the submissions were sufficiently substantiated regarding the date and the circumstances of the publication of documents A3 and A5.

[22] As the requirement of substantiation has to be met within the time limit for filing an opposition and any deficiency of justification cannot be remedied after expiration of this time limit (see above, point [10]), neither the submissions of the [opponent] dated September 30, 2005, which contain further explanations regarding the publication of documents A3 and A5, nor the declaration in lieu of oath of Dr. Hocker, which has been filed during the oral proceedings before the OD, on November 15, 2010, can be taken into account when the substantiation [of the grounds for opposition] is examined. Also, the argument presented in the statement of grounds of appeal, according to which the documents A3 and A5 had only been filed in order to provide evidence for the general knowledge of the skilled person and accordingly, the attacks contained in the opposition are based on A1 in combination with the general knowledge of the skilled person, is not persuasive. When discussing the ground of inventive step, the notice of opposition expressly indicates that the skilled person, based on document A1, would consider the teaching contained in documents A3 and A5 in order to reach the subject-matter of claim 1 of the patent-in-suit […]. Thus the BoA cannot endorse the argument of the [opponent] according to which the documents A3 and A5 have only been introduced as evidence for the common technical knowledge.  

[23] As already explained by the OD in […] its decision, the objections against inventive step which have been raised in the notice of opposition expressly rely on a combination of A1 and A3 or A5, respectively. Even if it was possible to object [to inventive step] based on document A1 in combination with the general knowledge of the skilled person, as first argued by the [opponent] during the oral proceedings before the OD […] and repeated in the statement of grounds of appeal, this does not mean that such an objection, which has only been raised after expiration of the time limit for filing an opposition can remedy the original lack of substantiation of the opposition. As mentioned above, the requirement of substantiation has to be met within the time limit for filing an opposition. Subsequent attempts of remedying deficiencies are not to be taken into account when this question is examined.

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

The file wrapper can be found here.

T 1795/10 – Over-Formalistic

This revocation appeal contains some interesting passages one of which concerns the admissibility of the opposition:

[1.1] Mr K. filed the opposition under the letter head of his firm and signed as patent attorney. The [patent proprietor] claimed that it was to be assumed that Mr K. was acting on behalf of an undisclosed client. The name of the opponent, however, was indispensable for a valid opposition.

The [patent proprietor] further stressed that Mr K. had failed to indicate his nationality and his place of residence, his place of business not being sufficient under R 76(2)(a) and R 41(2)(c).

[1.2] In decision G 3/97, the Enlarged Board of Appeal stated:

“An opposition is not inadmissible purely because the person named as opponent according to R 55(a) [EPC 1973 = Rule 76(2)(a) EPC 2000] is acting on behalf of a third party. Such an opposition is, however, inadmissible if the involvement of the opponent is to be regarded as circumventing the law by abuse of process. […]. However, a circumvention of the law by abuse of process does not arise purely because:

• a professional representative is acting in his own name on behalf of a client;
• an opponent with either a residence or principal place of business in one of the EPC contracting states is acting on behalf of a third party who does not meet this requirement.”

Thus, the mere fact that the opposition was filed by a patent attorney, even if he might be representing a third party, does not necessarily mean that there has been a circumvention of the law by abuse of process which might render the opposition inadmissible.

[1.3] Following a failure to comply with R 76(2)(a) and R 41(2)(c), R 77(2) gives the opposition division (OD)  the authority to invite the opponent to remedy the deficiencies and – if the opponent fails to do so within a specified time period – to reject the opposition as inadmissible.

However, since the OD issued no such invitation there is no basis for holding the opposition inadmissible. R 77(1) (rejection without invitation to remedy the deficiencies) applies only to non-compliance with the provisions of A 99(1) or R 76(2)(c).

Therefore, even if there was a deficiency under R 76(2)(a) regarding the opponent’s identity (nationality and place of residence), this would not render the opposition inadmissible.

The opponent also objected that the amendments did not comply with R 80 (according to which the amendments have to be occasioned by a ground for opposition under A 100). The Board disagreed:

[3.2] In the board’s view, the amendments to claim 1 satisfy the requirements of R 80, because the amendment consisting of the insertion of the sentence “the lithium-metal composite oxide is synthesized from … in dehumidified air” was filed with the aim of overcoming the OD’s conclusions as to lack of novelty. Thus, this particular amendment was occasioned by a ground for opposition under A 100(a), as required by R 80.

That the [patent proprietor] also took the opportunity to delete the word “having” from the sentence “having a Karl Fischer moisture content of 0.2 wt % or less when heated to 180°C” cannot be seen as an infringement to R 80 because claim 1 already includes an amendment occasioned by a ground for opposition. Of course, when amending its claims, the proprietor should not use this as an opportunity to tidy them up, but it would be over-formalistic to reject a claim - with the consequence of the revocation of the patent - simply because a further minor and/or linguistic amendment was carried out.

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The file wrapper can be found here.

T 613/10 – Gimme More

In this case Board 3.4.03 had to deal with the admissibility of an opposition.

The notice of opposition was filed on January 23, 2008. It consisted in filled-in form 2300 plus two pages containing a list of twenty further prior art documents and a statement which part of each of those documents was most relevant.

The time limit for filing an opposition (TFO) expired on January 25 (Friday).

A detailed explanation of the opponent’s case was received only on January 28 (Monday).

The Opposition Division (OD) rejected the opposition as inadmissible because the notice of opposition was insufficient.

The Board came to the same conclusion as the OD.

The decision is somewhat lengthy and not the most exciting read ever. If you just want a take-away summary, here is a translation of the headnotes:

1. When the admissibility of an opposition is to be examined, the circumstances of the individual case have to be considered, in particular if the requirements of R 76(2)(c) have not been clearly and unambiguously fulfilled. Among these circumstances there is the technical difficulty of the factual situation regarding the impugned patent and the cited prior art, as well as the number of claims of the impugned patent and the number of documents cited against it, even though in principle in opposition proceedings there is no limitation to a certain number of attacks or documents cited (point [13] of the reasons).

2. It is not incumbent on the patent proprietor to elaborate its own reasoning (Begründung) based on the existing indications in the notice of opposition if they are insufficient (point [17] of the reasons).

If you want the whole thing, please carry on:

*** Translation of the German original ***

[3] Within nine months of the publication of the mention of the grant of the European patent in the European Patent Bulletin, any person may give notice to the EPO of opposition to that patent by filing a written reasoned statement (A 99(1), first sentence, and R 76(1)). Pursuant to A 99(1), first sentence, and R 76(2)(c) the notice of opposition has to contain the following: (a) a statement of the extent to which the EP is opposed and (b) of the grounds on which the opposition is based, as well as (c) an indication of the facts and evidence presented in support of these grounds.

[4] For the opposition to be admissible the requirements of R 76(2)(c) have to be satisfied at the expiration of the nine-month TFO. Submissions that are filed before the EPO after the expiration of the TFO can, therefore, not be taken into account when the compliance with the above mentioned requirements is examined. Thus the written submission filed on January 28, 2008, i.e. after the expiration of the TFO, which inter alia contains 11 pages under the heading “Factual submissions and reasons” […] cannot be considered for this examination. The fact that – as explained by the [opponent] – the Opposition Division (OD) was in possession of the complete reasons for the opposition when it took up its work is irrelevant for this examination, too. The only thing that matters in the present case is the contents of the four-page form ‘Notice of opposition to a European Patent’ that was filed within the nine-month TFO, including two additional sheets […].

[5] By ticking [the appropriate boxes] in the ‘Notice of opposition’ form, which was filed on January 23, 2008, the opponent declared that it filed an opposition against the patent as a whole and that it raised objections pursuant to A 100(a) EPC 1973, i.e. lack of novelty and lack of inventive step.

[6] Moreover, the form ‘Notice of opposition’ and the two additional sheets belonging to it cited 26 documents, which were only filed after the expiration of the TFO. According to the wording of R 76(2)(c) it is sufficient to indicate the evidence within the nine-month TFO. However, the cited evidence does not have to be filed within the TFO; according to the established case law, it can still be filed at a later time (see e.g. T 328/87 [3.3.2]). Thus, when the admissibility of the opposition is to be examined, neither the content of the evidence (T 426/08 [5.1.3]) nor the conclusiveness (“Schlüssigkeit”) of the notice of opposition, i.e. that the submission, if correct, would make the request allowable, can be relevant. This question only arises when the evidence is assessed, i.e. when [the Board] establishes whether the evidence indeed proves the asserted facts. This belongs to the examination of the allowability of the opposition, which may, pursuant to A 101(1), only be envisaged when it is established that the opposition is admissible.

[7] What is disputed here is whether in the present case the requirement of indicating the facts presented in support of the grounds pursuant to R 76(2)(c) has been complied with, i.e. whether the opposition is sufficiently substantiated.

[8] For the opposition to be admissible it is sufficient if at the moment of expiration of the nine-month TFO there is a substantiated submission on behalf of the opponent for one of the grounds for opposition it invokes. The question of whether a notice of opposition complies with the minimum requirements for sufficiently substantiated grounds for opposition pursuant to A 99(1), first sentence, and R 76(2)(c), can only be decided in view of the overall context of the case under consideration (because several relevant factors, such as the difficulty of the questions to be decided, differ from one case to the other) (T 222/85 [4]). Thus, depending on the individual case, the requirement of sufficient substantiation pursuant to R 76(2)(c) is satisfied only if the relevant “facts and evidence” are indicated to an extent that is sufficient to ensure that both the patent proprietor and the OD know what the opposition is about (T 222/85 [4]). For this objective to be attained, the submissions on the grounds for opposition have to be understandable for both the patent proprietor and the OD without further investigations (T 2/89 [5]). Consequently, the OD and the patent proprietor have to be able to clearly understand the objection and the corresponding evidence (T 204/91 [5]) and must be able to review at least one of the invoked grounds for opposition without further investigation (T 453/87 [2.2]). Whether this is indeed the case has to be determined objectively from the point of view of the skilled person of the domain concerned by the patent.

[9] According to the established case law for an opposition to be admissible it is also necessary to point out the technical interrelationships (Zusammenhänge) between the prior art cited against [the patent] and the subject-matter claimed in the patent and to explain the conclusions drawn from them by the opponent (e.g. T 861/93 [5-6] and T 28/93 [4.1]). The kind of documents cited against the patent and the complexity of the claimed subject-matter determine the detail that is required for these technical assessments in each individual case. When the documents are short and the technical facts are simple, then it may not be necessary to cite concrete passages and to provide a comparison of features if the skilled person can directly understand the factual situation on his own, e.g. by reading the document. In this context all relevant circumstances have to be taken into account (see e.g. T 302/93 [2.4 et seq.] and T 1069/96 [2.3.3]).

[10] In the present case the notice of opposition consisted of only the four-page form and two additional sheets listing as evidence documents D1 to D26. For 25 of those documents (there are no indications for D25) particularly relevant passages or figures, respectively, are indicated, without there being any reference to one of the 26 claims of the impugned patent […]. The notice of opposition does not explain which of the documents concern which of the two grounds for opposition (lack of novelty and lack of inventive step). Nor has [the opponent] compared any of the cited passages or figures with the features of the subject-matter of one of the 26 claims, or established any technical interrelationships between the document and the corresponding claim of the impugned patent.

[11] It is relevant for the question of whether the present opposition is admissible whether these few indications in the form ‘Notice of opposition’ and the two additional sheets were sufficient for enabling the OD and the patent proprietor to understand without any further investigations what the opposition was about. In particular, it matters whether the indications enabled the OD and the patent proprietor to understand the submissions of the opponent at least in view of one of the 26 claims of the impugned patent, for at least one of the grounds of opposition, without any further investigations.

[12] The [opponent] is of the opinion that the number of claims of the impugned patent or of the documents cited against it is not relevant for the question of admissibility of the opposition. It, therefore, was of the opinion that it was not relevant that the impugned patent comprised 26 claims and that 26 documents had been cited in the ‘Notice of opposition’ form, because this number did not establish an abuse of procedure and because the documents were simple and easy to understand. Moreover, an opposition was not limited to a certain number of attacks or prior art documents.

[13] The Board cannot endorse this opinion.

Even though the case law has established that the substantiation of an opposition is sufficient if the indications regarding one of the documents cited against the patent enable the OD and the patent proprietor to review the validity (Stichhaltigkeit) of one of the grounds for opposition that are invoked, the circumstances of the individual case are indeed to be considered when the admissibility of an opposition is discussed, in particular if, as in the present case, the requirements of R 76(2)(c) have not been clearly and unambiguously fulfilled. Among these circumstances there is the technical difficulty of the factual situation regarding the impugned patent and the cited prior art, as well as the number of claims of the impugned patent and the number of documents cited against it, even though in principle in opposition proceedings there is no limitation to a certain number of attacks or documents cited.

It also has to be taken into account that the ‘Notice of opposition’ form and the two additional sheets do not indicate which subject-matter of the 26 claims of the impugned patent and which of the two grounds for opposition that are invoked are concerned by the respective passages and/or figures of the 26 prior art documents.

[14] Taking into account these circumstances, the Board has come to the conclusion that the OD and the patent proprietor were not directly enabled to understand which claimed subject-matter of the impugned patent was to be attacked […] along which of the two grounds for opposition, and based on which text passages or figures of the 26 cited prior art documents, and that they, therefore, had to conduct their proper investigations.

[15] The opposition was directed at the impugned patent as a whole (see [5] above). As there were no further indications regarding specific claims of the impugned patent, the Board adopts the view of the OD according to which the subject-matter of all 26 claims of the impugned patent was attacked and not only, as stated by the [opponent], both independent claims 1 and 17. This conclusion is in line with the decision of the Enlarged Board of Appeal (EBA) G 9/91 [8], in which the EBA established that a limitation of an opposition to a certain part (subject-matter) of the patent is rather unusual in practice and that, as a rule, the patent is attacked as a whole. Because of this conclusion the Board is does not find persuasive the argument of the [opponent] according to which it was self-evident that only the independent claims mattered in an opposition.

Thus all 26 documents cited against the patent, including the text passages and figures that were indicated as particularly relevant, referred to the subject-matter of all 26 claims of the impugned patent and both grounds for opposition (lack of novelty and lack of inventive step), because both grounds were invoked without any concrete reference to any of the claims or any document cited against them. Thus each of the documents cited could in theory be considered to be novelty-destructive for the subject-matter of each of the 26 claims, which alone amounts to 676 possible attacks. And even if at first only the two independent claims of the impugned patent had to be considered for the examination of novelty, each of the 26 documents cited against the patent could be allocated to each of these two independent claims, which already amounts to 52 possible attacks. As to inventive step, the number of possible attacks was much higher because combinations of the above-mentioned documents cited against the patent were to be considered in the context of inventive step, even though no combinations were mentioned in the ‘Notice of opposition’ form and the additional sheets.

Therefore the Board agrees with the [patent proprietor] that the present opposition confronted the patent proprietor and the OD with a very considerable number of combinations and, for this reason alone, would in any case have required proper investigations on behalf of the patent proprietor and the OD. Thus it was not necessary to answer the question whether the content of the 26 documents cited against the patent in the ‘Notice of opposition’ form could at all be considered in the examination of the sufficient substantiation of the opposition (because these documents had only been filed after the TFO had expired).

[16] But even if the Board assumed, in favour of the [opponent], that there was a clearly discernable intention to contest the novelty of the subject-matter of claims 1 and 17 based on document D4 and the relevant text passages and figures cited in this context, this could not lead to the opposition being considered admissible because even in novelty attacks it is, as a rule, necessary to point out the technical interrelationships between the individual features of the subject-matter claimed in the impugned patent and the state of the art resulting from a document, as well as the conclusions drawn from them (see above, point [9]). In the present case it was indeed necessary to point out a technical interrelationship because, as convincingly argued by the [patent proprietor] in view of the subject-matter of claims 1 and 17, the corresponding technical situation was not simple and intrinsically directly understandable for the skilled person, so that he could not see or review the relevance of the cited passages of document D4 for the subject-matter of claims 1 and 17 of the impugned patent, even if the content of this document, which had been filed after the expiration of the TFO, could have been taken into account. The same holds true for document D1.

[17] The [opponent] put forth several arguments why both the OD and the patent proprietor could have reviewed the present opposition without further ado under the present circumstances, but the Board cannot endorse these arguments.

It is true indeed that the effort generated by the examination of an opposition for the OD of the EPO is not relevant for the examination of the opposition. This notwithstanding, according to the established case law, for an opposition to be admissible the OD must be able to understand (verstehen und nachvollziehen) the submissions establishing the reasons (Begründung) for the opposition, which have been filed until the expiration of the TFO, without further ado (see above, point [8]).

Moreover, neither the law nor the case law establish a duty for the patent proprietor to successively “work off” (abarbeiten) the documents that have been cited in an opposition without an indication of facts presented in support of the opposition in order to establish which of the text passages and/or figures of those documents, which have been cited as being particularly relevant, could be, say, destructive of the novelty of the independent claims of its patent. Rather, the opponent has to provide reasons for its opposition and the content of the notice of opposition has to satisfy certain legal requirements for the opposition to be admissible (see point [3] above). It is not incumbent on the patent proprietor to elaborate its own reasoning (Begründung) based on the existing indications in the notice of opposition if they are insufficient.

The above mentioned requirement for reasons only concerns oppositions, but not search reports established by the EPO. Therefore, oppositions and search report are not comparable. The European search report mentions those documents, available to the EPO at the time of drawing up the report, which may be taken into consideration in deciding whether the invention to which the EP application relates is new and involves an inventive step (R 61(1)). Incidentally, these documents are cited together with the claims to which they refer and, as the case may be, the relevant parts of each document are identified (R 61(2)). However, the search report as such does not have to contain reasons like those that are required for an opposition.

[18] The [opponent] also considers that, similar to case T 302/93, the indications provided in the notice of opposition were sufficient for the opposition to be admissible. The present situation was equivalent to the one underlying decision T 302/93 because the ‘Notice of opposition’ form and the two additional sheets indicated the relevant text passages of the cited documents without giving explicit information on the particular relevance of the text passages cited and on the precise ground for opposition or patent claim to which the relevant passage was intended to refer. As in cas T 302/93 the cited passages for one of the documents cited against the patent, i.e. document D4, were sufficient for enabling to enable the OD and the patent proprietor to establish the link between those passages, the invoked ground of novelty and claim 1 of the impugned patent. Thus the present opposition was as admissible as the one underlying decision T 302/93.

However, the Board shares the opinion of the OD and of the [patent proprietor] according to which the present factual situation is not equivalent to the one underlying case T 302/93.

As explained by the [patent proprietor], in the opposition proceedings on which decision T 302/93 is based [the opponent] had already stated in the notice of opposition that the documents D1 and D3 cited with their relevant passages referred to claims 1 – 6 and claim 1, respectively. The [opponent] is correct in stating that in case T 302/93 also there was no explicit indication for document D1 as to which ground for opposition was invoked and to which claim precisely the indicated relevant passage referred, and that the Board nevertheless based its reasoning in decision T 302/93 on the assumption that this passage self-evidently referred to the subject-matter of independent claim 1 and its lack of novelty. However, in the present case the [opponent] has not cited any claim of the impugned patent as being concerned by the cited passages of the 25 documents of the notice of opposition and, therefore, in contrast to case T 302/93, has not established any connection whatsoever between at least one of the documents cited against the patent and at least one of its claims. The Board considers this to be an essential difference between the present case and case T 302/93.

Another significant difference results from the fact that in case T 302/93 the patent as granted comprised only 9 claims (against 26 claims in the present case) and that the notice of opposition cited only 8 documents against the patent (whereas there are 26 documents cited in the present case), because, as explained under point [13] above, the number of documents cited against the patent and the number of claims of the impugned patent is relevant for the question of admissibility.

[19] The Board also considers the factual situation underlying case T 1069/96 not to be comparable with the one underlying the present case.

In case T 1069/96 what was filed was not the ‘Notice of opposition’ form but a writ of opposition (Einspruchsschriftsatz) comprising short indications of the facts and evidence, and the opposition was essentially based on an alleged prior public use. There was no explanation whatsoever in this writ of opposition in which of the evidence filed for establishing the alleged prior use the individual features of the subject-matter of the impugned patent were disclosed. As the case underlying decision T 1069/96 was not complicated as to its technical substance, the Board was of the opinion that the average skilled person was able to establish the subject-matter of the alleged prior use to the extent needed for a comparison of this allegedly used subject-matter with the subject-matter of the impugned patent during the subsequent substantive examination (see point [2.3.4.2] of the reasons).

The present factual situation differs from the one underlying decision T 1069/96 in that the extent of the cited prior art is much greater than the one cited in case T 1069/96. Moreover, the Board is not of the opinion that that the present technical situation is so simple that the opponent could refrain from pointing out a technical interrelationship and explaining its relevant conclusions (see above, point [16]).

[20] For the above reasons the opposition filed within the nine-month TFO does not contain a sufficient indication of the facts invoked as reasons (Begründung) for the opposition, for both grounds for opposition (lack of novelty and lack of inventive step). Thus none of the grounds for opposition invoked have been substantiated and the requirements of R 76(2)(c) have not been complied with in the present case. Therefore, the OD rightly dismissed the opposition as inadmissible pursuant to R 77(1). […]

The appeal is dismissed.

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

The file wrapper can be found here.

T 1700/11 – Zero Discretion

This is an appeal by the patent proprietor against the maintenance of the opposed patent in amended form.

The representative of the opponent had filed the opposition on October 14, 2008, in the name of Henniges Automotive Sealing Systems North America Inc. He did not file an authorisation.

During the opposition proceedings, the patent proprietor contested the legal existence of the opponent and the validity of the authorisation of the representative. It referred to other proceedings before the EPO and the German Bundespatentgericht where oppositions filed in the name of GDX Automotive North America Inc. (the former name of the Henniges company) had been rejected as inadmissible.

The Opposition Division (OD) did not see any reason to doubt that the representative was authorised; examining authorisations was not among the duties of an OD. There was no need for adding a legally competent member to the OD because the legal situation was straightforward.

The patent proprietor filed an appeal and inter alia requested the Board to reject the opposition as inadmissible and to order apportionment of costs.

It did all it could to hinder the opponent from having the opposition declared not to have been filed, but it was not successful.

As the Board goes to some detail (which, for reasons unknown to me, appears to occur more often in German-language cases), the decision is rather lengthy. If you content yourself with the headnote, here is a translation:

If a European representative files an opposition in the name of a party and does not file a signed authorisation in due time after having been invited to do so by the Board of appeal, then the opposition is deemed not to have been filed (R 152(1)(6)).

This legal fiction entails a loss of rights (R 112(1)); an examination of the admissibility of the opposition which, from a legal point of view – fictitiously – has not occurred, is out of the question.

For those who want it all, please read on:

*** Translation of the German original ***

[2] Pursuant to R 152(6) the procedural steps taken by the representative of the [opponent] are deemed not to have been taken.

The [opponent] has not filed an authorisation for its professional representative within the four-month time limit set in the communication of the Board of appeal dated March 8, 2012.

[3] Generally speaking, the Board of appeal is entitled to order of its own motion that an authorisation be filed within a given time limit, because the Board has to examine, at any stage of the proceedings and of its own motion, whether a procedural situation (Prozessverhältnis) is duly justified. However, this duty to examine is limited by R 152(1) in connection with the “Decision of the President of the EPO dated 12 July 2007” (OJ EPO, Special edition 3/2007, p. 128) because professional representatives are not required to file authorisations. This waiver comes to an end when the EPO, in particular cases, requires [the representative] to produce an authorisation pursuant to Article 1(3) of the Decision of the President. The Board has exercised this power its communication dated March 8, 2012.

The “Decision of the President of the EPO dated 12 July 2007” is also binding on the Boards of appeal. The provisions established by means of this Decision qualify as law (haben Rechtsnormcharakter). The President was empowered, by means of direct legal delegation through R 152(1), to issue this Decision in is quality as legislative authority (Rechtssetzungsorgan). R 152(1) transfers, to a limited extent, the competence of the Administrative Council under A 33(1)(c) to amend the Implementing Regulations to the President of the EPO (regarding the quality of law of a Decision of the EPO, see T 991/04 [20]). Thus the issuing of this Decision is not a “necessary step” within the meaning of A 10(2)(a) but part of the EPC within the meaning of A 23(3). The “Decision of the President of the EPO dated 12 July 2007”does not concern matters governed by the RPBA. Moreover, Article 1(3) of this Decision fully ensures the independence of the Boards of appeal in the conduct of the proceedings.

[4] As the four-month time limit set in the communication dated March 8, 2012, has expired without any result, the opposition filed by the professional representative is deemed not to have been filed. This legal fiction that the opposition has not been filed has become effective ex tunc, at the time when the opposition was filed, as soon as the time limit expired on July 18, 2012, and generated a loss of rights within the meaning of R 112(1) for the opponent.

The Board is of the opinion that in the present case, for the sake of of procedural clarity, [the Board] has to decide on the loss of rights even though the [opponent] has not filed a request pursuant to R 112(2), first sentence. At the present stage of the proceedings, the mere communication concerning the legal fiction that the opposition had not been filed, could create doubt as to whether the patent was maintained unamended, because the OD had maintained the patent in amended form. Therefore, the order (Tenor) of the present decision is better suited to clarify the procedural situation than a mere communication of loss of rights.

[5] The impugned decision is based on incorrect procedural assumptions and, as a consequence, erroneously assumes that a legally effective opposition had been filed in due time. The objective incorrectness of the decision is not obviated by the fact that it was only the Board that ordered that an authorisation be produced. All the Board has to do is to review the correctness of the impugned decision based on the procedural facts that are now available. The decision contradicts the legal consequences stipulated in R 152(6) and is legally deficient. Thus the impugned decision had to be set aside and it had to be declared that the opposition was deemed not to have been filed.

Dismissal of the request to declare the opposition inadmissible

[6] As a consequence of the legal fiction that the opposition filed by the professional representative shall be deemed not to have been filed […] there is no legal basis for declaring that the opposition was inadmissible.

[7] The [patent proprietor] submitted that R 152(6) had to be interpreted narrowly and that the opposition […] had to be dismissed as inadmissible.

It would only be possible to base such an opinion on R 152(6) if the legal consequence ordered therein (that the procedural steps taken had to be deemed not to have been taken) were “pushed aside” (“verdrängt”) by means of legal consequences established by other provisions. In the case of the present opposition, this would mean that the legal fiction pursuant to R 152(2) according to which the opposition was deemed not to have been filed, was ineffective because the opposition had to be rejected as inadmissible under R 77(2). Thus the legal consequence provided in R 77(2) concerning the inadmissibility of the opposition had to completely replace the legal consequence provided in R 152(6). Then R 77 would be a lex specialis with respect to R 152(6).

[8] Similar legal considerations are found in the reasons for decision T 126/04. This decision postulates precedence of the provisions regarding the inadmissibility of an appeal over the legal fiction under A 14(5) EPC 1973 that a translation is deemed not to have been received. As the notice of appeal had only been filed in a privileged language but not in one of the official languages within the applicable time limit, the Board came to the conclusion that, in view of the special nature (Spezialität) of the provisions regarding the admissibility of the appeal, the legal consequence provided in A 14(5) EPC 1973 – according to which the [translation] is deemed not to have been filed – was not applicable.

In its legal assessment this decision expressly deviates from the reasons for decisions T 193/87 and T 323/87 and did not endorse the opinion expressed therein, that when (as a consequence of a legal fiction) there is no opposition, an examination of the admissibility of the opposition under R 56(1) EPC 1973 does not come into question.

[9] The Board of appeal is of the opinion that R 152(6), which is to be applied in the present case, does not establish a legal basis for a narrow interpretation within the meaning of decision T 126/04. The wording of R 152(6) is unambiguous and the use of the expression “without prejudice to” clearly establishes that other provisions may provide further legal consequences but are not intended to replace the legal consequence stipulated in R 152(6).

If this was intended, then the legislator would have had to use a wording such as “subject to” (“vorbehaltlich”).

With the reference to further legal consequences in R 152(6) the legislator wanted to make clear that the legal fiction consisting in that a procedural step was deemed not to have been taken does not exclude further consequences concerning the proceedings under consideration, which is illustrated by means of examples in what follows.

If a professional representative who has no authorisation files a statement of grounds of appeal, then, as soon as the time limit under R 152(6) has expired, the statement is deemed not to have been filed. However, this legal consequence is not intended to exclude that the appeal is dismissed as inadmissible because, according to the legal fiction the statement of grounds of appeal has not been filed.

Also, a request for examination filed pursuant to A 94 by a professional representative who acted without being authorised can have the legal consequence that, in addition to the legal fiction under R 152(6), the application as a whole is deemed to have been withdrawn.

[10] Therefore, the legal fiction pursuant to R 152(6) that the procedural step is deemed not to have been taken, precisely acts as the legal prerequisite that further legal consequences may be declared without any further examination of whether at the moment when the representative acted there was a substantive client-attorney relationship (materiellrechtliches Vertretungsverhältnis). The legislator has deliberately chosen this legal construction – as he has done in other provisions where the legal consequence of deeming acts not to have been taken is stipulated – in order to make it possible to speedily terminate the proceedings for the sake of procedural economy.

The piece of evidence “power of attorney certificate” (“Vollmachtsurkunde”) can only attest of an existing client-attorney relationship, but the fact that it is not filed does not necessarily exclude that there was an effective client-attorney relationship before; it can only serve as an indication that there was no authorisation ab initio. Without the fiction stipulated in R 152(6), the Board would have to clarify of its own motion the procedural fact (Prozesstatsache) that the authorisation for filing an opposition was missing. As a matter of fact, a European representative could have been instructed to take a procedural step although he had not filed (or was unable to file) a power of attorney certificate. Then the procedural step would be legally effective. The fiction of R 152(6) is needed [for the Board] to be able to treat the procedural step as legally ineffective when no power of attorney certificate is filed upon request.

Thus in the present case the opposition filed on October 14, 2008, is legally deemed not to have been filed ab initio, irrespective of whether the representative of the opponent was (at first) authorised, or not.

When, from a legal point of view, there is no opposition, then there is no room for examining the admissibility of the (legally inexistent) opposition under R 77(2).

A direct application of R 77(2) in view of the failure to submit a power of attorney certificate is out of the question because the examination of the power of attorney certificate for the European representative is not part of the examination as to admissibility under R 77. As Article 1(1) of the “Decision of the President of the EPO dated 12 July 2007” does not provide for an examination of the authorisation, the filing of the certificate cannot be a prerequisite for admissibility within the meaning of R 77(2).

Nor can the Board endorse the argumentation of the [patent proprietor] according to which the failure to file a power of attorney certificate has to have the same legal consequence as the failure to correct another deficiency within the meaning of R 77(2) in connection with R 76. As already explained, the fiction that the opposition is deemed not to have been filed allows [the Board] not to examine whether, at the time of filing of the opposition, there actually was no effective authorisation and the latter was withdrawn only at a later stage. The failure to provide the address of the opponent, which the [patent proprietor] cited as a remediable deficiency, does not raise corresponding questions of procedural law. As the procedural situation is not comparable, it is not necessary to “adjust” the legal consequence of a missing authorisation to the legal consequence of a missing address.

Therefore, the request of the [patent proprietor] to declare the opposition inadmissible cannot be granted.

No substantive decision on the dismissal of the opposition

[11] The [patent proprietor] has filed the auxiliary request that, in case that [the Board] refused to declare the opposition inadmissible, the opposition be dismissed as unallowable. As the Board has established that the opposition has to be deemed not to have been filed, the Board is not empowered to take a substantive decision and has to dismiss this request, too.

Request for a referral of the question of 

whether the opposition is admissible to the EBA

[12] According to the explanations given by the [patent proprietor] during the oral proceedings, the referral to the EBA requested by it concerns the legal question of whether the provisions governing the admissibility of an opposition prevail over R 152(6). If this were true, then the present opposition would be inadmissible and not to be treated as if it had not been filed.

[13] From the explanations given above (points [6] to [10]) it follows that the requirements for a referral of a legal question of fundamental importance to the EBA have not been fulfilled (A 112(1)) because the Board of appeal itself can answer this question based on the very wording of R 152(6) and because the literal interpretation of this provision leads to a procedurally convincing and consistent result.

[14] Nor is the result unfair (unbillig) because the decision with respect to the missing power of attorney certificate can be taken at so late a stage of the proceedings.

The fact that the power of attorney certificate was not filed by the [opponent] can have various reasons, which, contrary to the assertions of the [patent proprietor] do not exclusively express an abuse of procedure by the [opponent].

For instance, the [opponent] may, at any stage of the proceedings, withdraw the authorisation it had given to its authorised European representative, without giving reasons.

The procedural facts before the Board do not constitute sufficient proof that the respondent that is formally on record as opponent has caused the opposition or is even aware of its pendency.

As the [patent proprietor] conceded during the oral proceedings, it can happen in big groups having many legally interlaced but independent subsidiaries that an unauthorised person authorised the European representative to file an opposition because it believed that it was entitled to act in this way.

However, the procedural facts before the Board do not allow to exclude that an unauthorised person acted deliberately in the name of the [opponent] and cunningly deceived the European representative with respect to the missing authorisation, either.

In none of these cases the professional duty (standesrechtliche Verpflichtung) of a European representative to assure himself of the identity of his client, which the [patent proprietor] has invoked, can be considered to be an appropriate indication (Beweisindiz) that the opposition proceedings have to be attributed to the person that has been formally declared to be the opponent.

Also, the fact that the European representative has filed documents as evidence for the legal existence of the [opponent] during the opposition proceedings does not allow to convincingly conclude that an effective authorisation had been granted, but that the [opponent] abusively prevented the filing of a power of attorney certificate in order to trigger the fiction that the opposition had not been filed.

[15] It follows from the casuistry presented above that the unfairness of the application of the legal consequence provided in R 152(6) – as alleged by the [patent proprietor] – is exclusively based on the assumption that the [opponent] had acted in abuse of process although this assumption cannot be proven in the present stage of the proceedings. The unclear evidence (Beweislage) in the present individual case cannot serve as the basis for referring the legal question of whether the provision concerning the admissibility of an opposition are to be considered as lex specialis with respect to the legal consequence provided in R 152(6) to the EBA.

[16] The same holds true for the fact that in the present case the fiction that the opposition had not been filed had become effective only in the course of the appeal proceedings, because it would have been the duty of the OD to clarify the evidence concerning the due authorisation of the European representative (this procedural violation is also discussed below, point [19]). This failure of the OD does not justify challenging the validity of R 152(6). The risk of lengthy proceedings and corresponding high procedural costs can also arise in particular cases where there is a dispute with respect to the timely or belated payment of an opposition fee. If it is only the Board of appeal that establishes that the opposition fee has not been validly paid, then also the opposition has to be deemed not to have been filed pursuant to A 99(1).

[17] The Board of appeal does not see any reason to refer the legal question concerning the alleged precedence of the provisions governing the admissibility of the opposition to the EBA under A 112(1) in order to ensure uniform application of the law.

Decision T 126/04 based on A 14(5) EPC 1973 does not concern the interpretation of R 152(6) that is applicable here and cannot be considered to be a divergent decision, be it only for this reason. Moreover, neither the Board nor the [patent proprietor] are aware of former decisions on the present legal question. Decision J 12/88, where it was found that “proceedings before the EPO are null and void if the applicant’s representative acted without any instructions and without filing any valid authorisation” and which, therefore, ordered the reimbursement of all fees, does not go into details of the application of the fiction underlying what was then R 101(4) EPC 1973, but has not decided that the opposition was inadmissible either.

Thus the Board of appeal is of the opinion that none of the requirements for a referral to the EBA laid down in A 112(1) is fulfilled.

Reimbursement of the opposition and appeal fee, respectively

[18] As a further consequence of the legal fiction that the opposition has to be deemed not to have been filed the Board has ordered the reimbursement of the opposition fee. There is no cause in law for the EPO to withhold a fee that has been paid for a legal act that has not been performed. In the absence of any other legal arrangement, this also holds true when the fact that the act has not been performed is established on the basis of a legal fiction.

[19] The Board of appeal has also ordered the reimbursement of the appeal fee for reasons of equity under R 103(1)(a) because the appeal is to be allowed and the decision to be set aside is based on a substantial procedural violation.

The substantial procedural violation of the OD consists in the fact that it has failed to order the filing of an authorisation pursuant to R 151(1) in connection with Article 1(3) of the Decision of the President of the EPO dated 12 July 2007 on the filing of authorisations.

Even though according to this provision, the OD in principle has discretion to order the filing of an authorisation, this discretionary power was reduced to zero in the present case, in the light of the overall circumstances, and the OD would necessarily have had to order the filing of an authorisation. The mere uncertainty of the effectiveness of the filing of the opposition necessarily obliges the OD to remedy this uncertainty of its own motion before it decides on the substance of the case. In the present case, the procedural uncertainty was already established by the substantiated and documented contestation of the authorisation. In particular after having become aware of the decision of the OD in the parallel proceedings concerning application 01 127 947.8, the OD had no discretion not to request an authorisation because it had been stated in this decision that the authorisation of the professional representative of the opponent Henniges Automotive Sealing Systems North America Inc. had not been proven.

The OD has explained in its decision that in the parallel proceedings the opposition had been filed by GDX Automotive North America Inc., Delaware, and that the change of name to Henniges Automotive Sealing Systems North America Inc. had only been declared in the course of the proceedings, and that, therefore, the factual situation was different from the one underlying the present case. However, as rightly pointed out by the [patent proprietor], the change of name in the parallel proceedings has no significance whatsoever for the identification of the doubts concerning the valid authorisation of the professional representative. In the present proceedings the OD had no verifiable facts (Anknüpfungstatsachen) on which to base its trust in the alleged effectiveness of the authorisation of the professional representative. Therefore, the failure to order the filing of an authorisation constituted a substantial procedural violation within the meaning of R 103(2)(a). The Board also considers the further requirement mentioned in this provision, i.e. that the appeal is allowed, to be fulfilled. The impugned decision is to be set aside in its entirety, for the factual reasons on which the appeal was based, and the fact that the Board of appeal has ordered the opposition filed by the respondent to be deemed not to have been filed, which differs from the request of the appellant, is not to be understood as a (partial) dismissal of the appeal within the meaning of R 103(2)(a). It is also equitable to reimburse the appeal fee because the proceedings would not have had to take place if this procedural violation had not occurred.

No need for apportionment of costs

[20] The request of the [patent proprietor] to have the [opponent] bear the costs which [the patent proprietor] had incurred has to be dismissed, be it only because, as found in the present decision it cannot be established at all that the respondent has instructed “its” European representative to file an opposition. As there is no proof that the respondent has a causal responsibility for the filing of the opposition, it cannot be ordered to bear costs.

Order

For these reasons it is decided that:

1. The request of the appellant that the question of the admissibility of the opposition be referred to the EBA is dismissed.

2. The impugned decision is set aside.

3. The opposition is deemed not to have been filed.

4. The opposition and appeal fees are to be reimbursed.

5. The request of the appellant for apportionment of costs to the detriment of the respondent is dismissed.

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