T 1691/15 - [A] - Complaints during opposition

Key points

• For OJ ([A]). The opponent (a private person, not professionally represented) had filed complaints and communicated with the Directorate Quality Support. This correspondence should have been forwarded to the other parties and put in the public file. 

EPO Headnote

Exchanges between an opponent and the EPO which have a substantive and/or procedural bearing on the case in opposition proceedings, even if dealt with by the Directorate Quality Support in the context of a complaint handling system, should be communicated without delay to the other party/parties, as any other submission of a party or communication of the EPO in opposition proceedings. Such an exchange with a substantive and/or procedural bearing on the case should figure, by definition, in the public part of the file

T 1691/15 - link

Summary of Facts and Submissions

I. The appellant (opponent) lodged an appeal against the decision to reject the opposition and maintain the European patent No. 2 291 312 as granted, requesting that the decision under appeal be set aside and the patent be revoked.

Reasons for the Decision

3. Communication of the exchange of letters between the appellant and the EPO during the opposition proceedings - Referral to the Enlarged Board of Appeal (request 6)

3.1 In his letter dated 7 May 2015 in the appeal proceedings, the appellant referred, among others, to the following letters:

- EPO's letter dated 30 April 2014; and

- Me Wouters's letter dated 3 July 2014.

These letters were not retrievable from the public part of the file which led the respondent to request to be provided with the various exchanges between the EPO and the appellant as well as Me Wouters, or any other unnamed person on behalf of the appellant, if not present in the public part of the file.

3.2 Since the Board has access to the complete file, including the non-public part, it became aware that during the opposition proceedings the appellant has had an exchange with the EPO on file-related issues, based on complaints on his part.

Such complaints are dealt with by a dedicated EPO department called "Directorate Quality Support" (DQS). DQS has been entrusted with the office-wide handling of complaints, being responsible for the administration and management of all (external) complaints, and for drafting and dispatching a reply to the complainant. This centralised procedure is meant to ensure a harmonised treatment of all complaints filed at the EPO.

The complaints as well the DQS replies are by default kept in the non-public part of the file.

The legal basis for this is apparently the Decision of the President of the EPO, OJ EPO 2007, Special edition No. 3, J.3, Article 1(2)(b), which states that documents "may, exceptionally, be excluded from file inspection by the Office of its own motion if their inspection would be prima facie prejudicial to the legitimate personal or economic interests of natural or legal persons other than a party or his representative" (Article 128(4) EPC and Rule 144(d) EPC).

3.3 Rule 79(1) EPC requires the EPO to send a notice of opposition to the patent proprietor. Rule 79(2) EPC states that in case there is more than one opponent, the other opponents will receive a copy of the others' opposition. Rule 79(3) EPC requires the EPO to send any observations and amendments filed by the patent proprietor to the other parties, Rule 81(2) EPC requires the EPO to send any communication under Article 101(1) EPC and any reply thereto to all parties.

The principle as established by the above is that in opposition proceedings, which are inter-partes proceedings, all exchanges have to be notified to all parties. This is also acknowledged in the Notice of the EPO dated 3 June 2009, OJ EPO 2009, 434.

3.4 The Board, having access to the complete file as handled by the EPO, established that there has been the following exchange with the appellant during the opposition proceedings, documented in the non-public part of the file:

a) Note of a telephone conversation on 5 March 2014 with the opponent regarding his opposition, filed 26 February 2014, faxed to the opponent together with documentation regarding the filing of an opposition;
b) Email of 12 March 2014 of the opponent to the complaint department (Directorate Quality Support-DQS) regarding the opposition and referring to issues that clearly had a bearing on the opposition, more in particular substantive issues, such as the change to a "use" claim and novelty in respect of D1;
c) Reply of DQS to the opponent dated 30 April 2014 (the first letter mentioned in point 3.1 above);
d) The above mentioned (point 3.1) letter of Me Wouters dated 3 July 2014, on behalf of the opponent, clearly related to the substantive issues in the opposition proceedings;
e) Reply of DQS to this letter dated 10 July 2014 indicating that the letter of 3 July 2014 would be treated as third party observations;
f) A letter of the opponent dated 25 June 2015, this time addressed to the President of the EPO, again clearly related to the substantive and procedural issues in the opposition;
g) Reply of DQS dated 17 July 2015, to the letter addressed to the President of the EPO;
h) An email addressed by the opponent to the President of the EPO dated 26 July 2015, claiming procedural and substantive irregularities in the handling of the complaints as well as the opposition;
i) Reply of DQS to the above email, dated 9 September 2015.

3.5 The principle above described should have had the effect that the entire exchange between the then opponent (now appellant) and the EPO - which clearly related to file specific issues - should have been sent promptly also to the patent proprietor (now respondent), so as to comply with the above mentioned well established principle (see point 3.3 above).

This is all the more evident for the letter of 3 July 2014, of which it was indicated by DQS that it would be treated as a third party observation in the opposition proceedings. The same applies to the inclusion of the President of the Office in the complaint procedure, as well as for the complaints regarding the work of the search and examining division, of which the search- respectively primary examiner now formed also part of the opposition division. In view of these two issues, the patent proprietor should indeed have been made aware of the circumstances under which the opposition division had to do its work.

3.6 The Board therefore decided, taking into account the respondent's further arguments in its letter dated 13 April 2016 referring to the above mentioned principle, to provide the respondent with the above mentioned complete correspondence.

3.7 None of the above mentioned letters sent to the EPO and the corresponding DQS replies can be regarded as prima facie prejudicial to the legitimate personal or economic interests of a natural or legal persons, be it a party to the procedure or not.

There was therefore no necessity to exclude them from the public file. Such an exclusion should in any case be exceptional according to the above mentioned (point 3.2) Decision of the President of the EPO, not by default.

The appellant itself had explicitly mentioned some of the letters in his letter dated 7 May 2015 and even a posteriori explicitly agreed at the oral proceedings with the complete correspondence having been communicated to the respondent, arguing that it did not contain any additional arguments that the appellant would not have been aware of in view of the other letters available in the EPO register.

With the communication of the Board dated 26 April 2016 providing the respondent with the correspondence, a communication which is part of the public file, this correspondence becomes public as well, resolving the issue.

3.8 As put forward by the Board at the oral proceedings and not contested by the respondent, the respondent was given sufficient time (around three months) to study this correspondence in order to be able to present its comments and arguments pursuant to Article 113(1) EPC, to counter-balance any appellant's arguments which could possibly have, consciously or unconsciously, influenced the Board.

3.9 The respondent further argued that it was only by chance that it noticed there were exchanges between the opponent and the EPO that it was not aware of. This showed there was a definite issue of proper file handling in cases such as the present.

The Board indeed does not perform an ex officio check of the entire file, more in particular not whether there are non-public parts which should be public. With the present decision and its circulation for information of its colleagues, chairmen and members of the Boards of Appeal, it intends to increase awareness of the problems that may arise when exchanges with the EPO, more in particular under a complaints procedure, are withheld from the other parties in opposition proceedings and from the public part of the file.

3.10 The respondent further criticized the fact that the EPO had practically helped the opponent to file the opposition. This was derivable from the telephone note and fax a) of the list in point 3.4 above, in which the opponent apparently had been telephoned by an agent of the EPO to ask for his address and had been given information orally that he was to pay an opposition fee of a specific amount. This was subsequently supplemented by fax with the texts of the relevant legal requirements and form 2300.

3.11 According to Article 99(1) EPC an opposition shall not be deemed filed if the opposition fee has not been paid, or not been paid in time. Rule 77(1) EPC states that if the opposition division notes that the notice of opposition does not comply with Article 99(1) EPC it shall reject the opposition as inadmissible unless the deficiencies have been remedied before the expiry of the opposition period.

The practice of the EPO is that Formalities notify an opponent of any deficiencies in the opposition that have to be remedied before the expiry of the opposition period (Rule 77(1) EPC deficiencies). The non-payment of the opposition fee is considered to be one such deficiency, see Guidelines for Examination at the EPO, November 2015, D-IV, 1.2.1 and 1.3.1.

That is what has apparently been done, although it is indeed unusual that an opponent is telephoned in this respect, although that may have been caused by the absence of his private address in the notice of opposition. The Board cannot see in this respect any favourable treatment in respect of the opponent.

3.12 Referral to the Enlarged Board of Appeal

3.12.1 In view of the above issues, the respondent requested the following question to be referred to the Enlarged Board of Appeal (see respondent's letter dated 27 May 2016):

In inter parties (sic) proceedings, where one party engages in unilateral correspondence with the European Patent Office regarding the proceedings, is the Office obliged to inform the other party/parties promptly about this correspondence in order to preserve the right of the other party/parties to a fair and impartial procedure in particular to comply with Article 6 ECHR?

3.12.2 The Board decided not to refer the question to the Enlarged Board of Appeal since it was itself able to answer the question as far as it related to the facts of the present case and to solve the issue by providing the complete correspondence to the respondent.