- The Board finds that a withdrawal of a request for oral proceedings by the appellant can be a ground for partial reimbursement of the appeal fee even if the withdrawal is conditional (in this case “on the condition that auxiliary request 6, but not any higher-ranking request, be held allowable”.
- The Board also appears to find that the respondent does not need to withdraw its request for oral proceedings within the one-month time limit, i.e. that even if after the expiry of the one month period, there is still a valid and pertinent request for oral proceedings (of the respondent), which is only later withdrawn such that oral proceedings are cancelled the appeal fee is to be reimbursed at 25%.
- The respondent withdrew its request for oral proceedings well after one month after notification of the preliminary opinion, however within the possible extension due to COVID-19. The Board simply does not refer to the date of the respondent's letter.
EPO T 2141/16 - link
IX. Both parties requested oral proceedings. In a written communication issued in preparation for the oral proceedings dated 24 March 2020, the board expressed the preliminary opinion that the claims of the main request and auxiliary requests 1 to 5 did not meet the requirements of the EPC and that the claims of auxiliary request 6 met those requirements.
X. In its letter dated 28 April 2020, the appellant stated that its request for oral proceedings was withdrawn on the condition that auxiliary request 6, but not any higher-ranking request, be held allowable.
XI. In a reply [dated 26.05.2020] to the board's communication, the respondent stated that its request for oral proceedings was withdrawn on the condition that auxiliary request 6 be held allowable and that, on this condition, auxiliary request 6 was its main request and the higher-ranking requests were withdrawn.
XII. The oral proceedings were cancelled.
3. Reimbursement of the appeal fee
The appellant withdrew its request for oral proceedings within the time limit set under Rule 103(4)(c) EPC, and no oral proceedings took place. Thus, the appeal fee is to be reimbursed at 25%.
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 with the order to maintain the patent with the following claims and a description to be adapted where necessary:
Claims 1 to 7 of the main request, filed as auxiliary request 6 under cover of the respondent's reply to the grounds of appeal dated 23 March 2017.
3. The appeal fee is reimbursed at 25%.
Could it be that the Board cancelled the oral proceedings in response to the coonditional request of 28 April 2020? This would be within 1 month from the Board's communication (plus 10 days notification period), and the conditions seem to be met.
ReplyDeleteI think that without the letter of 26.05.2020, the Board was not in a position to cancel the oral proceedings and remit on the basis of AR-6.
DeleteI think the somewhat surprising result is that the rule ("if any request for oral proceedings is withdrawn within one month of notification of the communication issued by the Board of Appeal in preparation for the oral proceedings, AND no oral proceedings take place") possibly does not imply that the withdrawal needs to cause the cancelling of oral proceedings, or that the Board needs to be in a position to cancel the oral proceedings at the expiry of the one month period.
ReplyDeleteCA/80/19, para. 74 epxlained that " A period of one month would appear sufficient [to] allow a Board to take up another appeal case and send out the summons for this new case in due time to satisfy the requirement of Rule 115(1) EPC. ", para. 72 makes the further connection with " allow[ing] the Board to use the oral proceedings room for a different case"