T 0443/18 - Announcing decisions vs opinions

 Key points

• In this opposition appeal case, the OD had announced during the oral proceedings that the Main Request was not inventive. The OD later reverses on this point. The appellant/opponent considers this to be a substantial procedural violation.
• “The Board concurs with the respondent that the relevant passage of the minutes, which have never been contested, wordily states that, unlike the cases underlying the decisions of the Boards of Appeal and of the Enlarged Board of Appeal cited by the appellant, what was announced and thereafter withdrawn by the opposition division was an opinion without any binding character and not a final interlocutory decision.”
• “the Board observes that after the revision of the initially announced opinion in view of a further distinguishing feature which became apparent to the opposition division only upon discussion of D4' with respect of the auxiliary request 1 [] the object of the discussion was reverted to the main request []  whereby the appellant did have the opportunity to defend its position with respect to the revised conclusion of the opposition division regarding inventive step of the main request. The Board is thus convinced that the review of the non-binding opinion announced by the opposition division in the course of the oral proceedings did not negatively and substantially affect the position of the appellant/opponent in defending its case.”

T 0443/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t180443eu1.html

1. The appellant alleged a major procedural deficiency caused by the circumstance that the opposition division reversed in the course of the oral proceedings a previously announced and binding interlocutory decision according to which the subject-matter of claims 1 and 6 as granted was considered to lack inventive step in view of document D4' combined with general technical knowledge. In the appellant's view the statement of the opposition division reported under point 5 of the minutes had clearly the binding character of a final interlocutory decision which as such and according to established Case Law of the Boards of Appeal (decisions T390/88, G12/91, T0699/99, T0042/02, T1081/02 and [G4/91] were cited by the appellant) could not be reversed. Furthermore, the appellant argued that the review of the already announced and binding interlocutory decision did have an impact on the development of the whole oral proceedings and on its outcome which negatively affected the appellant's position in defending its case.

1.1 The arguments of the appellant are not convincing for the following reasons:

The Board concurs with the respondent that the relevant passage of the minutes, which have never been contested, wordily states that, unlike the cases underlying the decisions of the Boards of Appeal and of the Enlarged Board of Appeal cited by the appellant, what was announced and thereafter withdrawn by the opposition division was an opinion without any binding character and not a final interlocutory decision. This is further confirmed by the fact that the opposition division gave its opinion without having yet announced a decision on the admissibility of D4', which decision according to point 3 of the minutes, last sentence, was intended to be announced later. The Opposition Division indeed decided to admit document D4' only at a later stage, namely after announcing that the subject-matter of claim 6 as granted was not rendered obvious by the combination of D4' and D1 (see point 10 of the minutes, third paragraph).

Furthermore, the Board observes that after the revision of the initially announced opinion in view of a further distinguishing feature which became apparent to the opposition division only upon discussion of D4' with respect of the auxiliary request 1 (i.e. the claimed arrangement of the buffer part on the saw blade housing), the object of the discussion was reverted to the main request (see line 17 of point 8 of the minutes), whereby the appellant did have the opportunity to defend its position with respect to the revised conclusion of the opposition division regarding inventive step of the main request. The Board is thus convinced that the review of the non-binding opinion announced by the opposition division in the course of the oral proceedings did not negatively and substantially affect the position of the appellant/opponent in defending its case.

1.2 In view of the above, the Board concludes that no substantial procedural violation adversely affecting the rights of the appellant/opponent took place, and that therefore, no "special reasons" in the meaning of Article 11 RPBA 2020 for setting aside the decision under appeal and remitting the case to the opposition division can be identified. As a result, the reimbursement of the appeal fee under Article 103 (1) (a) EPC requested by the appellant is not justified.