T 0049/13 - Additional decision without discussion

Key points

• In this opposition appeal, the OD found all requests to violate A123(2). In addition, the main request was found to lack novelty. However, novelty was not discussed during the oral proceedings. Is this a substantial procedural violation?
• The Board decides it is not: "Had the opposition division not considered the compliance of the main request with Article 54 EPC, its decision would have remained the same; the patent would have still been revoked. It thus may have been an error on the part of the opposition division to decide on the compliance of the main request with the requirements of Articles 54 and 83 EPC, or not [rather than?] to have considered these issues under an obiter dictum. Nevertheless, an error which would not have led to a different outcome of the proceedings is not a substantial procedural violation."

EPO T 0049/13 -  link

Reasons for the Decision

Substantial procedural violation (Article 113(1) EPC)

1. The appellant submitted that the decision under appeal suffered from a substantial procedural violation, since the opposition division decided that the main request lacked novelty, although the parties were not heard on this issue during the oral proceedings (see decision under appeal, sections 14.1 to 14.4 and 16).

2. The decision under appeal is 26 pages long. The first 19 pages assess the compliance of the main request, and of all ten auxiliary requests before the opposition division, with the provisions of Article 123(2) and (3) EPC. All claim requests were found to contravene Article 123(2) and/or (3) EPC. On the next 4 pages of the decision under appeal, the opposition division assessed the compliance of the main request with the requirements of Articles 54 and 83 EPC. The main request was found to lack novelty and to comply with the requirements of Article 83 EPC. On the last three pages of the decision, under the title "obiter dictum", the opposition division assessed the compliance of the main request with Article 56 EPC and found that the main request involved an inventive step.

3. The minutes of the oral proceedings before the opposition division make no mention of any discussion of objections under Articles 54, 56 and 83 EPC. Appellants' allegation in this respect appears therefore to be correct.

4. The board has therefore to assess whether the opposition division's failure to hear the parties at the oral proceedings before deciding on objections raised on the grounds for opposition according to Article 100(a) and (b) EPC constitutes a substantial procedural violation.

5. The board considers that a "substantial procedural violation" is an objective deficiency affecting the entire proceedings (see decision J 7/83, reasons 12; OJ 1984, 211) which is to be determined on an objective basis (see decisions J 32/95, reasons 4.1; OJ 1999, 713, and T 0160/09, reasons 6).

6. There is no suggestion on file that the consideration of the claim requests in the light of Article 123(2) and (3) EPC was marred by a substantial procedural violation.

7. According to Article 101(2) EPC, if at least one ground for opposition prejudices the maintenance of the European patent, the opposition division shall revoke the patent in its entirety. Having determined that the main request comprised added matter, it was thus not necessary for the opposition division to return to the main request in order to consider if it might, nevertheless, comply with other provisions of the EPC.

8. Had the opposition division not considered the compliance of the main request with Article 54 EPC, its decision would have remained the same; the patent would have still been revoked.

9. It thus may have been an error on the part of the opposition division to decide on the compliance of the main request with the requirements of Articles 54 and 83 EPC, or not to have considered these issues under an obiter dictum. Nevertheless, an error which would not have led to a different outcome of the proceedings is not a substantial procedural violation, (see decisions T 2249/08, reasons 6.7; T 1340/10, reasons 1.6).

10. For these reasons, the facts underlying the present case are not comparable to those underlying case R 3/10. In that case, the parties were heard during the oral proceedings on novelty, but not on inventive step. The board in that case subsequently acknowledged novelty, but not inventive step, i.e. the failure to hear the parties on inventive step had a decisive impact on the decision, since it changed the outcome. Thus, the appellants cannot rely on decision R 3/10 to support their case.

11. The board therefore finds that the decision under appeal does not suffer from a substantial procedural violation.

12. In view of these considerations, neither the appellants request for the reimbursement of the appeal fee (Rule 103(1)(a) EPC) nor their request for remittal (Article 111(1) EPC) can be granted.