7 Aug 2019

T 0460/16 - Admissibility opposition and oral proceedings

Key points

  • In this opposition appeal, the Notice of opposition did not include a request for oral proceedings. The proprietor contested the admissibility of the opposition (as not including a sufficiently reasoned statement). The opponent then requested oral proceedings with a separate letter. The OD rejected the opposition as inadmissible without holding oral proceedings. The decision stated that "no oral proceedings were requested by the Opponent" . It must be assumed that the OD somehow overlooked the letter of opponent.
  • In any case, the Board decides that this violated Article 116 EPC: " According to Article 116(1) EPC "oral proceedings shall take place ... at the request of any party to the proceedings." The wording of the provision makes it clear that when oral proceedings have been requested, they have to be appointed, and that there is no room for discretion."
  • The patentee makes the argument that admissibility of the opposition is to be based on the Notice of opposition alone, so that later requests for oral proceedings are irrelevant. This argument does not convince the Board. "The [patentee] has argued that the requests were not contained in the notice of opposition and were therefore irrelevant for deciding on the admissibility of the opposition. However, according to Article 116(1) EPC, if there is a request of a party for oral proceedings, they shall take place, irrespective of the point in time they have been requested. Before this right to be heard has been granted to the party, the decision cannot be taken (Article 113(1) EPC)." 

EPO T 0460/16 -  link

Reasons for the Decision
1. The right of a party to oral proceedings in proceedings before the European Patent Office is set out in Article 116 EPC. According to Article 116(1) EPC "oral proceedings shall take place ... at the request of any party to the proceedings." The wording of the provision makes it clear that when oral proceedings have been requested, they have to be appointed, and that there is no room for discretion.
2. In the present case, the notice of opposition filed on 13 April 2012 (Fax) did not contain a request for oral proceedings.
However, with letter dated 1 August 2013, the opponent (now the appellant) requested oral proceedings in case the opposition was not allowed in the written proceedings ("Gleichzeitig wird für den Fall, dass dem Einspruch im schriftlichen Verfahren nicht stattgegeben werden sollte, die Durchführung einer mündlichen Verhandlung gemäß Artikel 116 EPÜ beantragt").


With letter dated 10 January 2014 (see last paragraph) the opponent stated that the request for revocation of the granted patent was maintained, as was the auxiliary request for holding oral proceedings in accordance with Article 116 EPC if the patent was not revoked in the written proceedings ("Der Antrag auf Widerruf des erteilten Patents im gesamten Umfang aufgrund mangelnder Neuheit und mangelnder erfinderischer Tätigkeit wird daher genauso aufrecht erhalten, wie der Hilfsantrag auf Durchführung einer mündlichen Verhandlung gemäß Artikel 116 EPÜ, falls das Patent nicht im schriftliche[n] Verfahren widerrufen wird.")
3. Despite these requests, which had at no point been withdrawn, the Opposition Division stated in its decision, erroneously, that "no oral proceedings were requested by the Opponent" (point 5 of the facts and submissions) and took its decision without holding oral proceedings.
4. In deciding without holding oral proceedings, the division based the decision on grounds or evidence on which the appellant had not had an opportunity to present its comments orally, contrary to the appellant's rights enshrined in Articles 116(1) and 113(1) EPC.
5. The respondent has argued that the requests were not contained in the notice of opposition and were therefore irrelevant for deciding on the admissibility of the opposition. However, according to Article 116(1) EPC, if there is a request of a party for oral proceedings, they shall take place, irrespective of the point in time they have been requested. Before this right to be heard has been granted to the party, the decision cannot be taken (Article 113(1) EPC).
6. The respondent has further argued that the requests for oral proceedings were conditional on an outcome from subsequent written proceedings. With the opposition being inadmissible, no written proceedings commenced, and the condition was thus not met. This meant that there was no valid request for oral proceedings.
This argument is likewise not convincing:
The appellant had formulated as a main request to "allow the opposition in the written proceedings" (letter dated 1 August 2013) / "revocation of the patent" (letter dated 10 January 2014).
The respective main request has not been granted, because the patent was not revoked. With the main request not being granted, the auxiliary request became valid, i.e. to hold oral proceedings in accordance with Article 116 EPC.
The passages in both letters thus constitute valid requests for oral proceedings which the opposition division was obliged to respect.
7. The failure to hold oral proceedings violated the appellant's right to be heard as enshrined in Article 113(1) EPC and constitutes a substantial procedural violation which justifies reimbursement of the appeal fee under Rule 103(1)(a) EPC and remittal to the opposition division (Article 11 RPBA), so that oral proceedings can be appointed before a decision is taken by the Opposition Division.
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the opposition division for further prosecution.
3. The appeal fee is reimbursed.

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