T 0038/11 - Postponement not requested

EPO T 38/11

For the decision, click here

Key points

• The Board: "Although the appellant declared being surprised by the course of events [during oral proceedings before OD], it did at no point request a postponement of the oral hearing. The appellant continued defending its case for more than two hours, with the aid of a technical expert, not only for the main request, but also for the claims of the auxiliary requests. For the board, this sequence of events is an indication that the appellant was in effect not prevented from pursuing its case." 
• Practice guidance: if you formally express surprise during OP, always request postponement.
• The decision also deals with an interesting (late-filed) insufficiency attack based on the argument that the patent's examples would not actually provide the synergistic effect recited in the claims.  

Reasons for the Decision

1. Substantial procedural violation, remittal to first instance, reimbursement of the appeal fee

[...]

1.2 Procedural facts

- The summons for oral proceedings, dated 26 February 2010, referred to novelty and inventive step as the issues to be discussed.

- The ground of opposition [of insufficiency of disclosure] was for the first time mentioned in the opponent's letter dated 12 August 2010, page 7 (point 2.1).

- Oral proceedings before the opposition division took place on 12 October 2010. According to the Minutes, the parties' initial requests were established, including the opponent's request for, inter alia, revocation under Article 83 EPC, and the appellant's (patentee's) request that this fresh ground of opposition should not be admitted.

- In the following discussion which lasted for about 2 hours (see Minutes, pages 1 to 3), the reasons for the late filing and the substance and relevance of the objection were extensively discussed.

- After an interruption for deliberation, the opposition division announced its interim decision that the claims of the main request did not meet the requirements of Article 83 EPC.

- At this point, the proprietor stated that it was taken by surprise, but wished to continue with the six auxiliary requests on file.

- As there were no further arguments, the auxiliary requests were also rejected under Article 83 EPC and the patent was revoked.

1.3 The appellant's complaint

It follows that in the present case, the fresh ground of opposition was filed late, but it was substantiated and prima facie relevant, since the opposition division was able to base its decision on it.

The appellant complained that the fresh ground of opposition was not mentioned in the summons for oral proceedings and no explicit request for admitting the fresh ground had been filed by the opponent, so that its admittance at the oral proceedings came as a surprise to the appellant. At the oral proceedings there had not been sufficient time for preparing a defense against the fresh ground of opposition, e.g. by drafting auxiliary requests. The appellant's alleged grievance is thus understood as a violation of its right to be heard (Article 113 (1) EPC).

1.4 The board's view:

1.4.1 Although the appellant declared being surprised by the course of events, it did at no point request a postponement of the oral hearing. The appellant continued defending its case for more than two hours, with the aid of a technical expert, not only for the main request, but also for the claims of the auxiliary requests.

For the board, this sequence of events is an indication that the appellant was in effect not prevented from pursuing its case.

1.4.2 According to another argument, the appellant was prevented from filing additional requests and/or experimental evidence. However, when asked during the oral proceedings whether it wished to file new requests, the appellant said it had none and wished to continue with the six auxiliary requests on file (see Minutes of the oral proceedings, page 3, penultimate paragraph). As to the filing of new experimental evidence, the appellant had in appeal proceedings the opportunity to do so, but did not avail itself of it, as he had not done within the two months preceding the oral proceedings before the Opposition Division.

1.4.3 The appellant referred in its written submission to T 433/93 (in particular to Headnote 1):

"If an opposition division wishes to introduce a new ground of opposition into the proceedings in addition to the ground(s) substantiated in the notice of opposition, either of its own motion or upon request by an opponent, the patent proprietor must be informed (normally in writing) not only of the new ground of opposition (ie the new legal basis for the opposition), but also of the essential legal and factual reasons (ie its substantiation) which could lead to a finding of invalidity and revocation. Thereafter the patent proprietor must have a proper opportunity to present comments in reply to the new ground and its substantiation."

However, in the board's view, the present situation differs in an important aspect: In the case decided in T 433/93, the fresh ground of opposition was mentioned for the first time at the oral proceedings, whereas in the present case the objection under Article 83 EPC and the essential reasons therefore were communicated to the appellant by the opponent's letter dated 12 August 2010 (page 7 (point 2.1)) already about two months before the oral proceedings.

In decision T 1164/00 (of 2 September 2003; Reasons point 2), the board found that an appellant had been taken by surprise and prevented from having a fair chance of preparing its defence, if it was informed for the first time during oral proceedings of the introduction of a fresh ground of opposition. In such a case, the opposition division should have adjourned the oral proceedings to give the appellant more time, in order to comply with Article 113 EPC. Here again, the present situation differs in that the fresh objection under Article 83 EPC and the supporting arguments were communicated to the appellant about two months before the oral proceedings. In the board's view, a period of time of several weeks should have been sufficient to study the new arguments and, if necessary, file a request for postponement of the oral proceedings.

Therefore, the board considers that the case law cited by the appellant is not applicable.

1.4.4 The board is also not convinced by the appellant's argument to have been caught by surprise. In the board's opinion, the appellant should have been prepared for a discussion of the patent's own examples. There is no better expert than the patentee itself in matters regarding its own patent. So, there is no need for a long preparation time. Also, in particular, there was sufficient time because the opposition ground of insufficiency of disclosure and the reasons therefore were made known to the appellant two months before the oral proceedings. Although the written objection appeared under the heading of "Inventive step", the terms "lack of sufficiency of disclosure" and "Article 83 EPC" were explicitly mentioned so that there could have been in the board's view no doubt about the opponent's intentions. It is also implicitly clear that the opponent wished the ground to be considered at the oral proceedings and in the decision, otherwise there would have been no purpose in the whole argument.

1.4.5 As to the justification for the late filing of the fresh opposition ground, the reason given was that it was raised in response to the appellant's own arguments according to which among the more than 460 test examples of the patent only about 125 test mixtures exhibited the desired synergistic effect (see the appellant's letter of 19 February 2009, page 4).

Note: e.g. claim 18: " A synergistic mixture comprising an ammonium salt activated by an oxidant, a non-oxidizing biocide and an aqueous system..." 

The board finds this acceptable. To be sure, the test examples were already present in the patent as granted and a corresponding objection could have been raised during the nine-month opposition period. However, the statements in the appellant's letter of 10 February 2009, drawing attention to the circumstance that the great majority of the Examples of the patent did not exhibit the desired synergy effect and that such synergy was "rather an exceptional situation", could hardly be left uncommented by the opponent. Once the opponent's objections under Article 83 EPC were known to it, the appellant was in a position to prepare itself for a discussion and a defense strategy.

1.4.6 The appellant argued that even if allegations to an objection under Article 83 EPC were made in the opponent's letter of 12 August 2010, the supporting arguments in the decision under appeal were different from those on which the revocation of the patent were based, namely that an excessive number of experiments would have to be performed in order to obtain compositions showing synergism. Such a change in arguments had additionally taken the appellant by surprise.

For the board, these arguments are not convincing. The arguments of the opponent concerned not only the incommensurate broadness of the claims, but also a lack of guidance and necessity of trial and error experimentation which caused an undue burden (see page 6, lines 1 and 11, and page 7 of the above mentioned letter). These arguments therefore correspond to those discussed at the oral proceedings.

1.5 Conclusion

In summary, the board is not convinced that the first instance proceedings were tainted with a substantial procedural violation under Article 114(2) EPC. Therefore, a remittal to the department of first instance is not justified (Article 11 RPBA).