T 1174/18 - Equitable and causal link under Rule 103

 Key points

• Rule 103 again, but this time good old Rule 103(1)(a): substantial procedural violation.
• The alleged substantial procedural violation is that the OD did not admit certain auxiliary requests. However, the patentee as appellant also maintained the claims as granted as main request, before the OD and before the Board, and defended novelty of the claims as granted in appeal.
• The Board does not grant the reimbursement of the appeal fee, because of the requirement that the reimbursement must be 'equitable' under Rule 103(1)(a): “Regardless of whether the behaviour of the opposition division may have constituted a procedural violation, the board notes that it did not affect the proceedings before the opposition division as a whole but only the auxiliary requests. To have the opposition division's decision on the main request reviewed, the patent proprietor had to file an appeal anyway.”.
• “For the reimbursement of the appeal fee to be equitable, there has to be not only a substantial procedural violation but also a causal link between this procedural violation and the necessity to file the appeal (see "Case Law", V.A.9.7.1, for instance, decision T 792/12, Reasons, point 10.3.1).  .... In this case, there is no such causal link. The patent proprietor's appeal is primarily directed at setting aside the first-instance decision refusing their main request that the opposition be rejected. Since this issue is not affected by the alleged procedural violation, a reimbursement of the appeal fee would not be equitable. The board observes that it is indeed true that [-] under these circumstances and in view of the requirement of a causal link set out above [-] the question of whether the reimbursement of the appeal fee is equitable may depend on the extent of the appellant's appeal.”

T 1174/18

https://www.epo.org/law-practice/case-law-appeals/recent/t181174eu1.html

Consequently, auxiliary request 7 meets the requirements of Article 123(2) EPC.

9. Remittal to the opposition division

The remittal of the case to the opposition division is within the discretion of the board according to Article 111(1) EPC.

The subject-matter of claims 1 and 8 of auxiliary request 7 has not been examined by the opposition division as to its patentability. The amendments that led to these claims are such that the interpretation of the claims is bound to change. In particular, it is questionable whether the claims cover an ID document in which the security material covers the entire image area. This may raise new questions, such as whether document D3 is still the most relevant piece of prior art for the examination of novelty and/or inventive step. Moreover, none of the parties had submitted substantiated arguments in favour of or against the patentability of the claimed subject-matter of auxiliary request 7 prior to the oral proceedings before the board. Therefore, in accordance with Article 11 RPBA 2020, special reasons present themselves for remitting the case to the opposition division for further prosecution.

The board has taken note of the parties' desire to have the case decided by the board without a remittal and their willingness to discuss these matters at the oral proceedings before the board. However, the board has doubts that this way of proceeding would have allowed for a fair and thorough consideration of the matters to be decided upon.

The parties also proposed to adjourn the oral proceedings before the board. However, remittal of the case is preferable if only because the examination of the EPO's own motion provided for in Article 114(1) EPC is less restricted in opposition proceedings than in appeal proceedings (see decision G 9/91 of the Enlarged Board of Appeal, Reasons, point 18) and may, for instance, introduce additional state of the art of its own motion if need be.

Thus, it is appropriate to set aside the decision under appeal and remit the case to the opposition division for further prosecution on the basis of auxiliary request 7.

10. Reimbursement of the appeal fee

In accordance with Rule 103(1)(a) EPC:

"the appeal fee shall be reimbursed in full ...

where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation, ..."

The request for a reimbursement of the appeal fee is based on an alleged procedural violation consisting in the opposition division's decision not to admit any of the appellant's auxiliary requests filed during the oral proceedings before the opposition division.

Regardless of whether the behaviour of the opposition division may have constituted a procedural violation, the board notes that it did not affect the proceedings before the opposition division as a whole but only the auxiliary requests. To have the opposition division's decision on the main request reviewed, the patent proprietor had to file an appeal anyway.

However, for the reimbursement of the appeal fee to be equitable, there has to be not only a substantial procedural violation but also a causal link between this procedural violation and the necessity to file the appeal (see "Case Law", V.A.9.7.1, for instance, decision T 792/12, Reasons, point 10.3.1). A reimbursement is equitable if the procedural violation affects the entire first-instance proceedings (decision J 7/83 defines a substantial procedural violation as "an objective deficiency affecting the entire proceedings", see Reasons, point 12) such that it would justify the remittal of the case without further ado.

In this case, there is no such causal link. The patent proprietor's appeal is primarily directed at setting aside the first-instance decision refusing their main request that the opposition be rejected. Since this issue is not affected by the alleged procedural violation, a reimbursement of the appeal fee would not be equitable. The board observes that it is indeed true that under these circumstances and in view of the requirement of a causal link set out above the question of whether the reimbursement of the appeal fee is equitable may depend on the extent of the appellant's appeal.

Consequently, the requirements of Rule 103(1)(a) EPC are not met and the request for reimbursement of the appeal fee has to be refused.

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 for further prosecution.

3. The request for reimbursement of the appeal fee is refused.