T 0337/17 - Not considering opponent's arguments

Key points

• This is the second appeal in this opposition case. In T 168/11, the Board had remitted the case with the order to maintain the patent in amended form based on specifies and a description to be amended. This second appeal is about the description.
• The Board finds the impugned decision to be insufficiently reasoned and therefore violate the opponent's right to be heard. 
• " In its letter dated 6 May 2016, the [opponent] indicated that paragraphs [16,17,18 and 19] of the adapted description [as filed by patentee] were not in agreement with the claims as amended per the auxiliary request dated 12 May 2015. This was supported by arguments." 
• The opposition division reacted by stating in the contested decision that "[t]he description has been amended; the Parties have been given opportunity to comment thereto". However, this does not prove that the appellant's comments were demonstrably heard and considered. [...] For these reasons, the contested decision is not sufficiently reasoned within the meaning of Rule 111(2) EPC.
• The Board decides on the text of the adapted description and remits the case back to the OD with the order to maintain the patent in amended form with specified claims, description and drawings.
• The OD now has to issue the Rule 82 invitation and the patentee has to file the translated claims and pay the prescribed fee upon which the formal decision to maintain the patent in amended form will be taken by the OD.

EPO T 0337/17 -  link

Reasons for the Decision

Respondent's main request

1. According to established case law, a decision of the European Patent Office must show that all potentially refutative arguments adduced by a party are actually refutable (T 246/08, catchword) and that comments were demonstrably heard and considered (T 763/04, reasons 4.4).

2. However, the impugned decision does not give reasons as to why the appellant's comments in its letter dated 6 May 2016 with regard to the adapted description as submitted by the respondent with the letter of 12 April 2016 were not acceptable.

In its letter dated 6 May 2016, the appellant indicated that paragraphs [16,17,18 and 19] of the adapted description were not in agreement with the claims as amended per the auxiliary request dated 12 May 2015. This was supported by arguments. Furthermore, it was indicated that the examples did not fall within the scope of the amended claims, again supported by arguments. The appellant requested that the patent not be maintained in this form.

The opposition division reacted by stating in the contested decision that "[t]he description has been amended; the Parties have been given opportunity to comment thereto". However, this does not prove that the appellant's comments were demonstrably heard and considered.

3. For these reasons, the contested decision is not sufficiently reasoned within the meaning of Rule 111(2) EPC.

4. As a consequence, the appellant's right to be heard within the meaning of Article 113(1) EPC has not been respected, which amounts to a substantial procedural violation.

5. Therefore, the respondent's main request to dismiss the appeal must fail.

Refund of the appeal fee

6. The substantial procedural violation also justifies the refund of the appeal fee according to Rule 103(1)(a) EPC.

Respondent's auxiliary request

7. In its submission of 1 February 2019, the appellant declared its agreement with the maintenance of the patent on the basis of the respondent's auxiliary request. The board too agrees that the proposed amendments meet the requirements of the EPC.

8. Since the appellant's other requests are granted, the board exercises its discretion under Article 111(1) EPC not to remit the case to the department of first instance.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance with the order to maintain a patent in amended form on the basis of:

- claims 1-27 of the auxiliary request as submitted during the oral proceedings on 12 May 2015

- pages 3, 4, 9 and 12 of the description as submitted by the respondent with the letter dated 22 May 2017

- pages 2, 5-8, 10, 11, 13-19 of the description of the patent specification

- drawings 1/6-6/6 of the patent specification

3. The appeal fee is to be reimbursed.