T 0776/17 - Should have adjourned

Key points

•  The OD admitted a document filed by the opponent one month before the oral proceedings and then refuses a request for adjournment of the oral proceedings of the patentee.
• "As set out above, D18 was filed one month before the oral proceedings before the opposition division. Together with the filing of D18, the respondent [opponent] raised a novelty objection based on this document. Only during oral proceedings did the respondent also raise an inventive-step objection based on D18 as the closest prior art together with the assertion that no effect had been shown to be present "
• "Not providing the appellant [patentee] with sufficient time to react to this attack by granting its request to adjourn the oral proceedings represents a violation of the appellant's right to be heard within the meaning of Article 113(1) EPC. As set out above, the inventive-step attack based on D18 as the closest prior art comprised the assertion that no effect had been shown to be present. It is thus absolutely credible to the board that the appellant would have needed time to react, and thus the oral proceedings should have been adjourned. Since admittance of the inventive-step attack based on D18 led to the rejection of auxiliary request 2 [], the violation of the appellant's right to be heard constitutes a substantial procedural violation."
• "For the sake of completeness, the board notes that the conclusion made here that a substantial procedural violation occurred in relation to the opposition division's admittance of D18 is not in contradiction to the board's conclusion above [that] the opposition division applied the right principle[s] in a reasonable way [when it decided to admit D18]. The procedural violation does not arise due to the admittance of D18 but due to the fact that after this admittance, oral proceedings were not adjourned."
• "The opposition division's finding of lack of inventive step based on D18 as the closest prior art is tainted with a violation of the right to be heard under Article 113(1) EPC (see 25.1 above), and a causal link exists between the violation and the final decision since this objection was the sole reason for the opposition division that the second auxiliary request was not allowable, thus amounting to a substantial procedural violation. Since the appellant did not have time to file auxiliary request 3 before the opposition division, it was necessary to lodge an appeal. Under these circumstances, the board considers it equitable that the appeal fee be reimbursed in full in accordance with Rule 103(1)(a) EPC."
• Usually, a substantial procedural violation is also a ground for remittal, but a remittal is not discussed in the decision. 
• I just highlight that it is key for parties to actually request an adjournment of the oral proceedings during the oral proceedings before the OD once the OD decides to admit a submission of the opposing and a party feels insufficiently prepared to deal with it during the oral proceedings and wishes to preserve the issue for appeal. If you don't request an adjournment, you essentially forfeit the argument that you didn't have sufficient time in the first instance proceedings, possibly also for getting your response admitted in appeal under Art. 12(4) RPBA. So it seems safe to predict we will see this more often in the future. Of course, the risk for the opponent is that the OD will actually grant the adjournment and that the patent will be in force for a few more months even if ultimately invalid.
• The Board, when deciding to admit AR-3: "Contrary to the respondent's view, the appellant could not have been expected to react to the objection by filing the appropriate set of claims to overcome the objection during the oral proceedings before the opposition division. The new objection raised complex new issues to which the appellant could not be expected to respond on the spot during the oral proceedings (see also point 26 below). Thus, the appellant could only submit the third auxiliary request with the statement of grounds of appeal."

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t170776eu1.html

Right to be heard

26. In its statement setting out the grounds of appeal, the appellant referred to a violation of its right to be heard and a substantial procedural violation having occurred in the context of the opposition division's admittance of D18 due to:

- the rejection of the request for an adjournment (point 5 on page 2 of the statement)

- the fact that it had not been given an opportunity to comment on the admittance of D18 (point 2 under "Admissibility of D18 and D19" of the statement)

26.1 Rejection of the request for an adjournment

As set out above, D18 was filed one month before the oral proceedings before the opposition division. Together with the filing of D18, the respondent raised a novelty objection based on this document. Only during oral proceedings did the respondent also raise an inventive-step objection based on D18 as the closest prior art together with the assertion that no effect had been shown to be present (point 10.2 of the minutes)

Not providing the appellant with sufficient time to react to this attack by granting its request to adjourn the oral proceedings represents a violation of the appellant's right to be heard within the meaning of Article 113(1) EPC. As set out above, the inventive-step attack based on D18 as the closest prior art comprised the assertion that no effect had been shown to be present. It is thus absolutely credible to the board that the appellant would have needed time to react, and thus the oral proceedings should have been adjourned. Since admittance of the inventive-step attack based on D18 led to the rejection of auxiliary request 2 (point 10.4 of the minutes), the violation of the appellant's right to be heard constitutes a substantial procedural violation.

26.2 For the sake of completeness, the board notes that the conclusion made here that a substantial procedural violation occurred in relation to the opposition division's admittance of D18 is not in contradiction to the board's conclusion above (point 5.1) that in admitting D18 the opposition division applied the right principle in a reasonable way. The procedural violation does not arise due to the admittance of D18 but due to the fact that after this admittance, oral proceedings were not adjourned.

27. Reimbursement of the appeal fee

Under Rule 103(1)(a) EPC, the appeal fee is to be reimbursed in full in the event of interlocutory revision or where the board deems an appeal allowable if this reimbursement is equitable by reason of a substantial procedural violation.

As the board holds that the third auxiliary request is allowable, the decision under appeal is to be set aside and the appeal is allowable. The opposition division's finding of lack of inventive step based on D18 as the closest prior art is tainted with a violation of the right to be heard under Article 113(1) EPC (see 25.1 above), and a causal link exists between the violation and the final decision since this objection was the sole reason for the opposition division that the second auxiliary request was not allowable, thus amounting to a substantial procedural violation. Since the appellant did not have time to file auxiliary request 3 before the opposition division, it was necessary to lodge an appeal. Under these circumstances, the board considers it equitable that the appeal fee be reimbursed in full in accordance with Rule 103(1)(a) EPC.

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 the patent on the basis of the third auxiliary request filed with the statement of grounds of appeal and a description to be adapted.

3. The appellant's appeal fee is reimbursed.