T 0540/13 - Lost in the EPO Post Room

EPO Headnote

When the opposition division decides that an opposition is inadmissible in a case where at least one other admissible opposition has been filed, it is not necessary for the opponent of the opposition held inadmissible to appeal this decision in order to preserve party status in appeal proceedings initiated by another party (see points 1.2 to 1.5 of the reasons).

Key points

• The opposition of Opponent O1 was held inadmissible by the OD. O1 did not appeal this. Is O1 then party of as right (respondent) in the appeal of the patent proprietor? The Board decides that it has to review the party status of O1, and thus the admissibility of the opposition, of its own motion. Irrespective of whether O1 appealed the OD's decision regarding the admissibility (and irrespective of whether O1 could have done so, the patent being revoked by the OD).
• The Board decides that the opposition of O1 was admissible. The Board accepts as proven that the EPO had received a package sent with DHL containing the opposition form and cited evidence, but according to the EPO lacking the Annex with Facts and Arguments. The Board finds that the OD should have made an enquiry as to what has happened in the EPO post room. 
• "  In the board's view, the opposition division should have made an attempt to investigate the circumstances of opening the DHL package and/or ascertaining whether the statement of facts and arguments could yet be found in the EPO, at the latest following receipt of the letter dated 25 January 2008, at which point it was clear that opponent O1 believed that the statement of facts and arguments had indeed been filed within the opposition period. Without such an investigation, it is unclear how the opposition division could, more than four years later, regard it as a "fact" that the statement of facts and arguments had not been received. Further, by waiting so long before considering the matter, any meaningful investigation was rendered impossible. The board is now in the position that nine years have passed since the filing of the opposition. It is more than doubtful, whether hearing witnesses, either those offered by opponent O1 or those within the EPO, after such a long time could now still serve any useful purpose." 

EPO T 0540/13 -  link

Reasons for the Decision

1. Admissibility of the appeal of appellant-opponent O1

1.1 The Opposition Division held that the opposition of opponent O1 was inadmissible. Opponent O1 appealed this part of the decision (see above point VIII).

1.2 As regards the admissibility of opponent O1's appeal, the board notes that only persons adversely affected by a decision are entitled to appeal (Article 107 EPC, first sentence). On the one hand, opponent O1 was not adversely affected by the decision to revoke the patent. On the other hand, the opposition division also held that O1's opposition was inadmissible and took a separate "additional decision" to this effect (see above point V). It is open to question whether this additional decision, which seemed to have a negative outcome for opponent O1 but did not change the fact that its main request that the patent be revoked had been granted, is open to a separate admissible appeal. However, for the reasons given below, this question does not need to be answered in the present case, where also the patent proprietor appealed the decision and did not withdraw its appeal.

1.3 As a matter of principle, the boards of appeal have to examine the question of party status ex officio before dealing with the substance of the case (cf. T 384/08, point 3 of the reasons).

1.4 It follows that in the present case, in order to determine whether opponent O1 has party status as of right (Article 107 EPC), here as a respondent with respect to the proprietor's appeal, the board has to decide on the admissibility of opponent O1's opposition, irrespective of whether or not the appeal of opponent O1 is admissible.

1.5 Following T 1178/04 (OJ EPO 2008, 80; cf. points 24 to 30 of the reasons) rather than T 898/91, which took another view (cf. point 1.2 of the reasons), the board is therefore of the view that when an opposition division decides that an opposition is inadmissible in a case where at least one other admissible opposition has been filed, it is not necessary for the opponent of the opposition held inadmissible to appeal this decision in order to preserve party status in appeal proceedings initiated by another party.

1.6 Since the board holds the opposition to be admissible (see below), meaning that, in any case, opponent O1 is a party as of right to these appeal proceedings as respondent, a formal decision as to the admissibility of the appeal of opponent O1 is not necessary.

1.7 Being a party as of right to the patent proprietor's appeal, opponent O1 has the right to request that a formal decision denying its party status be formally set aside. For this reason, the board has included this matter in the order.

2. Admissibility of the opposition of opponent O1

2.1 The essential facts and submissions concerned with the filing of the opposition of opponent O1 are the following:

(i) Opponent O1 filed a notice of opposition by fax on 2 October 2007 in which it was stated that the facts and arguments [in support of the grounds for opposition required by Rule 76 EPC] "will follow".

(ii) Opponent O1 sent a package by DHL, which was received at the EPO on 4 October 2007. The package contained EPO Form 2300.1, a confirmation of the notice of opposition sent by fax as well as the documents cited in the notice of opposition. However, contrary to what was stated in EPO Form 2300.1 ("VII. Facts and arguments (Rule 55(c) EPC) presented in support of the opposition are submitted herewith on a separate sheet (annex 1)"; "XI. List of documents Enclosure No. ... 1 Facts and arguments (see VII.) No. of copies: 2", apparently, there was no statement of facts and arguments. This was the last day for filing an opposition (9 months after grant on 3 January 2007, plus 1 extra day due to the public holiday in Germany on 3 October 2007).

(iii) In a communication dated 24 October 2007 from the formalities officer on behalf of the opposition division, opponent O1 was informed that there were no sheets of facts and arguments filed with the letter dated 2 October 2007.

(iv) A statement of facts and arguments was then sent by fax by opponent O1 on 30 October 2007 under cover of a letter dated 29 October 2007, saying "As requested in your communication dated 24 October 2007, we enclose herewith Facts and Arguments". The enclosed statement showed the Representative's letterhead and the date "29 October 2007". There was not the slightest indication that any "Facts and Arguments" had already been submitted earlier.

(v) In a communication dated 18 January 2008 from the formalities officer on behalf of the opposition division, opponent O1 was informed that "The notice of opposition contains no statement of grounds on which the opposition is based (Rule 76(2)(c) EPC)" and that "the notice of opposition will be rejected by the opposition division as inadmissible...".

(vi) In a letter dated 25 January 2008, opponent O1 expressed "amazement" at the substance of the communication. It argued that the facts and arguments had been submitted with the DHL package, and submitted declarations of persons involved in the sending of the package in support thereof. Opponent O1 requested that the office communication be withdrawn. Conditionally, oral proceedings were requested. That the "Facts and Arguments" as submitted later didn't show the date 2 October 2007 but 29 October 2007 was explained with an alleged reprinting under new letterhead whereas a first version had allegedly been printed on plain white paper. A copy thereof was enclosed. Opponent O1 did not give any explanation as to why the alleged presence of "Facts and Arguments" in the DHL package, sent on 02 October 2007 was not mentioned in the letter of 29 October 2007. Later, in the statement of grounds of appeal they explained that it was their belief that the formalities officer, when issuing the communication dated 24 October 2007, had not been able to find the original of the Facts and Arguments as handed in with DHL package of 2 October 2007 and was simply asking for a replacement. The fact that when posting the DHL package on 2 October 2007 with a letter dated the same day, this very letter still said that the "Facts and Arguments will follow", was explained with the observation that this letter was marked and only meant as a confirmation copy of the fax sent on the same day.

(vii) The opposition division subsequently first dealt with the matter in a communication accompanying a summons to attend oral proceedings dated 9 August 2012. It stated that "Facts and arguments substantiating the indicated grounds for opposition have not been filed within the opposition period. Even the paper confirmation received on 4 October 2007 ... did not comprise facts and arguments, as has been confirmed by file inspection". Consequently, the opposition division considered that "the opposition of O1 has to be rejected as inadmissible".

(viii) At the oral proceedings dated 4 December 2012, after hearing the parties, the opposition division decided that the opposition of opponent O1 was inadmissible. In the impugned decision, it is stated that the arguments of opponent O1 supported by the statements of the persons involved in sending the notice of opposition "cannot dispel the fact that "facts and arguments" were not filed within the opposition period".

2.2 In accordance with case law, in cases where there is a dispute as to whether documents have been filed with the EPO, it is necessary to determine the likely course of events. In the present case, this would be to determine which of the following two scenarios is more likely to have happened: (i) the DHL package did not include the statement of facts and arguments; or (ii) the statement was lost in the EPO.

2.3 Re (i): Opponent O1 tried to convince the Board that, although not having mentioned such content in the letters of 2 and 29 October 2007, it believed the DHL package to include the statement of facts and arguments. Of course, that does not rule out that an error occurred on the part of opponent O1. On the other hand, with letter of 28 January 2008, it provided evidence regarding the alleged submission of Facts and Arguments together with the DHL package.

2.4 Re (ii): It appears that neither the formalities officer nor the opposition division undertook any effort to investigate what may have happened when the DHL package was opened in order to determine the likelihood of the statement of facts and arguments having being mislaid within the EPO.

2.5 In a similar case, J 20/85 (OJ EPO 1987, 102), in which missing pages of claims were the issue, the board found that (cf. reasons 3):

"Article 114(1) EPC provides that "In proceedings before it, the European Patent Office shall examine the facts of its own motion". In the present case, faced with the contention and evidence identified above, it was necessary for the Receiving Section to investigate, in detail, what had happened to the set of documents inside the European Patent Office, from the moment when the envelope containing the documents was opened in the Post Room."

The decision goes on to state the following (cf. reasons 5):

"Having regard to the provisions of Article 114(1) EPC quoted in paragraph 3 above, the Board has considered whether the case should be remitted to the Receiving Section for further investigation, or whether it should itself investigate the facts of the case in relation to the handling of the documents which were filed in the Post Room on 27 September 1984. However, although it was filed in due time, the Statement of Grounds of Appeal was not filed until September 1985, so that any such investigation and taking of evidence would necessarily have to have taken place more than a year after the relevant events. It could not be expected in those circumstances that the personnel in the Post Room would have a clear recollection of what happened to the documents of this particular case, and therefore to conduct such an investigation now would not be fair either to the Appellant or to the European Patent Office. This consideration emphasises the importance of what is stated in paragraph 4 above, to the effect that in a case such as the present the department or section concerned should initiate the taking of evidence as soon as it is apparent that there is a dispute as to facts between the European Patent Office and a party to proceedings before it."

2.6 In the board's view, the opposition division should have made an attempt to investigate the circumstances of opening the DHL package and/or ascertaining whether the statement of facts and arguments could yet be found in the EPO, at the latest following receipt of the letter dated 25 January 2008, at which point it was clear that opponent O1 believed that the statement of facts and arguments had indeed been filed within the opposition period. Without such an investigation, it is unclear how the opposition division could, more than four years later, regard it as a "fact" that the statement of facts and arguments had not been received. Further, by waiting so long before considering the matter, any meaningful investigation was rendered impossible. The board is now in the position that nine years have passed since the filing of the opposition. It is more than doubtful, whether hearing witnesses, either those offered by opponent O1 or those within the EPO, after such a long time could now still serve any useful purpose.

2.7 Under the circumstances that no investigation took place within the EPO it now seems impossible to establish whether it was more likely that the statement of facts and arguments was omitted by mistake on the part of opponent O1, or was lost within the EPO. In such a case, the opponent has to receive the benefit of any doubt.

2.8 Consequently, the board considers that the opposition of opponent O1 is admissible. Opponent O1 is therefore at least a party as of right, i.e. has the status of respondent with respect to the proprietor's appeal (cf. point 1.5 above).