T 2382/19 - Direct revocation

Key points

•  The proprietor requested no oral proceedings in the reply to the opposition and filed no auxiliary requests.
• The OD revoked the patent about 7 months later without any preceding Communication and without holding oral proceedings.
• The Board sees no mistake in this course of action. The OD simply followed the opponent's arguments in the decision and did not introduce new lines of argumentation.
• The Board, in translation: "The board cannot see that the opposition division based its decision on reasons on which the appellant would not have had the opportunity to comment. The opposition division followed the arguments put forward by the opponent for interpretation; The patent owner was able to comment on this. Whether the view expressed by the opposition division (and the opponent) was correct is not a question of the right to be heard."
• Neither is there a violation of legitimate expectations.
• The Board considers the claims to be novel, sets aside the decision, and remits the case to the OD for further prosecution. 
• The proprietor filed four auxiliary requests about 2 weeks after the Board's decision, this time also requesting oral proceedings. 

EPO 

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

https://www.epo.org/de/boards-of-appeal/decisions/t192382du1

Machine translation

Consequently, the subject matter of claim 1 also differs from these citations by features B, C, D1, D2 and E.

5. Right to be heard - Application for reimbursement of the appeal fee

5.1 Violation of the right to be heard

The appellant requested reimbursement of the appeal fee because the opposition division had violated the right to be heard. In particular, after the reasons for the objection and the response, they decided directly and without an oral hearing.

The appellant's core argument was that the opposition division had stated for the first time in its decision "that and why it was not necessary to use the description to interpret claim 1". This was not stated by the opponent. The complainant therefore had no opportunity to comment on this.

In interpreting the claim, the respondent's notice of objection argued that the claim was broadly worded. Based on the wording of the claim, the opponent explained what meaning and scope the respective features included in their opinion "without additions or interpretations through the description" (point D 1.3 of the notice of opposition).

In its response to the objection, the appellant countered that the description and drawings should be used to interpret the claim, to determine the subject matter of the claim and to assess the novelty.

In its decision, the opposition division followed the opponent by stating that "there is no reason to interpret the overly broad claim 1 more narrowly using the description" (reasons for the decision 7.4, emphasis in the decision). This interpretation of the claim in the spirit of the opponents led to the decision that the subject matter of the claim was not new compared to A2.

The board cannot see that the opposition division based its decision on reasons on which the appellant would not have had the opportunity to comment. The opposition division followed the arguments put forward by the opponent for interpretation; The patent owner was able to comment on this. Whether the view expressed by the opposition division (and the opponent) was correct is not a question of the right to be heard.

Therefore, the opposition division did not violate the right to be heard.

5.2 Violation of the requirement to protect trust

The complainant states that the opposition division violated the requirement to protect legitimate expectations because it did not write a notice with a preliminary statement before the decision was made in the written procedure. The appellant could have trusted that the opposition division would issue a decision before a negative decision for her.

For the following reasons, the requirement to protect legitimate expectations was not violated.

In accordance with Article 101(1), second sentence, EPC, the opposition division invites the parties to submit comments on their communications or on the pleadings of other parties as often as necessary. This provision therefore does not generally require that the reasons opposing the maintenance of the patent be communicated in a decision in all cases, but only in those cases in which this is "necessary" (see "Jurisprudence of the Boards of Appeal" IV.C.6.2 and there cited decisions). Such a "need" can only arise with a view to further clarification of the facts or due to the provision of Article 113(1) EPC. The opposition division therefore only has to request a statement and issue a decision if it considers this to be necessary, for example in order to address new factual or legal reasons that have not yet been put forward or to point out any existing ambiguities.

It is therefore not necessary for the opposition division to always give the patent proprietor a further opportunity, going beyond Rule 79(1) EPC, to change the description, the patent claims and the drawings if necessary. The EPC does not provide for this. Rather, when the Claims Division sends a communication under Article 101(1), second sentence, EPC, that communication may give the patent proprietor the opportunity to amend the description, the claims and the drawings, if necessary (Rule 81 (3 ) EPC). However, if such a notice is not sent because it was not necessary, the patent holder does not necessarily have to be given the opportunity to change the documents.

Since the opposition division based its decision on the objections already raised in the notice of opposition, it was not necessary to issue a decision in the present case.

Furthermore, the complainant points out that the guidelines for examination generally provide for the issuance of a decision, especially if "under certain circumstances a patent could be admitted in an amended, restricted version" (see guidelines E.II.1.1.iii). The patent holder can rely on this.

This is not convincing. The quoted section of the Guidelines cannot be understood to mean that an opposition division must always send a notice if a patent could be maintained in an amended, restricted version. Such an understanding would contradict the legal norms mentioned above.

Since there is no significant procedural defect, one of the requirements of Rule 103(1)(a) EPC is not met and the appeal fee therefore cannot be refunded.