T 1623/14 - Not deciding on inventive step attack

Key points

• The Board finds a substantial procedural violation, because the OD's decision is insufficiently reasoned, because the OD's decision does  not address one of the opponent's inventive step attacks.
• " The appellant [opponent] in the first instance proceedings explicitly and repeatedly argued that the subject-matter of claim 6 of the patent was not inventive in view of document D1 in combination with the common general knowledge of the skilled person []. However, the Opposition Division in its reasons for the decision, [] when discussing inventive step of the subject-matter of claim 6 made reference only to documents D5 and D4 as prior art documents and neither explicitly nor implicitly took into account the alleged common general knowledge of the skilled person. The Opposition Division therefore failed to address the main argument submitted by the [opponent]; this constitutes inadequate reasoning which contravenes Article 113 EPC 1973 and results in a substantial procedural violation." 

EPO T 1623/14 - link

4. Reimbursement of appeal fee (Rule 67, first sentence, EPC 1973)

4.1 According to Rule 67, first sentence, EPC 1973 (regarding the applicability of the provisions of the EPC 1973 instead of Rule 103(1)(a) of the EPC in the revised text for European patent applications pending at the time of its entry into force, see J 10/07, OJ EPO 2008, 567, 585, 586, point 7 of the Reasons), "the reimbursement of appeal fees shall be ordered ... where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation".

4.2 As regards the first prerequisite of said rule, allowability may also be the case if the appeal is only partly allowed, provided that the Board, in substance at least, follows the request sought by the appellant (see J 37/89, point 6 of the Reasons). This can be interpreted in the sense that the Board must be in disagreement with the main argumentation in the decision under appeal as concerns the ratio decidendi, i.e. that the Board in essence accepts the appellant's reasons concerning the case decided by the decision under appeal (see T 228/89, point 4.2 of the Reasons; T 704/96, point 6.1 of the Reasons).

4.3 As outlined above at point 1.2, the Board, contrary to the Opposition Division and essentially accepting the appellant's [opponent's] reasons, holds that the subject-matter of claim 6 as granted (main request) lacked an inventive step in view of the disclosure of document D1 in combination with common general knowledge. Consequently, the decision under appeal is to be set aside, which is why the Board follows in substance the request of the appellant [opponent].

4.4 Moreover, in the present case the reimbursement is equitable by reason of a substantial procedural violation.

4.4.1 The obligation to provide adequate reasoning in a decision in accordance with Rule 68(2) EPC 1973 is closely linked to the principle of the right to be heard under Article 113 EPC 1973. A failure to do so is to be considered a substantial procedural violation justifying the reimbursement of the fee for appeal (see Case Law of the Boards of Appeal of the European Patent Office, 8**(th) Edition, July 2016, IV. E. 8.4.4, with further references).

4.4.2 The appellant [opponent] in the first instance proceedings explicitly and repeatedly argued that the subject-matter of claim 6 of the patent was not inventive in view of document D1 in combination with the common general knowledge of the skilled person (see letter of 22 April 2014, points 2 and 3, and minutes of the oral proceedings before the Opposition division on 20 May 2014, point 8).

4.4.3 However, the Opposition Division in its reasons for the decision, page 3, when discussing inventive step of the subject-matter of claim 6 made reference only to documents D5 and D4 as prior art documents and neither explicitly nor implicitly took into account the alleged common general knowledge of the skilled person. The Opposition Division therefore failed to address the main argument submitted by the appellant; this constitutes inadequate reasoning which contravenes Article 113 EPC 1973 and results in a substantial procedural violation.

4.5 As a result, the Board according to Rule 67, first sentence, EPC 1973 finds the request for reimbursement of the appeal fee allowable.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The appeal fee is to be reimbursed.