T 0413/16 - Procedural violation - new document in decision

Key points

• In this opposition appeal, the Board finds a substantial procedural violation of the OD. The OD had relied in its decision not only on document E1 but also on document R1 which was mentioned in the 'background of the invention' section of E1. E1 had been discussed during the oral proceedings, but not R1.
• " In its grounds of appeal, the appellant [opponent] maintained that R1 was a point of discussion neither in the written opposition procedure nor during oral proceedings before the opposition division. This was notably not contradicted by the respondent [patentee], which simply maintained that the appellant had been given ample opportunity to present arguments on E1 during the oral proceedings. However, despite being cited in E1 amongst several other documents, the content of R1 was evidently never a point of discussion before the opposition division and the appellant was given no reason to believe that the disclosure in R1 would be of any significance in the opposition division's decision. The appellant was thus not given an opportunity to present its comments on R1." 
• " It thus follows that the opposition division used the content of R1 and the alleged commercial activities of the assignee named in E1 in its decision without the appellant at least having been given the chance to be heard on its content, contrary to Article 113(1) EPC. A party being denied their right to be heard amounts to a substantial procedural violation." 

EPO T 0413/16 - link

3. Reimbursement of the appeal fee (Rule 103 EPC)

3.1 In point 2.4.1.4 of its decision, the opposition division refers to R1. This document was however not on file before the opposition division, it simply being mentioned in the 'background of the invention' section of E1. In its decision the opposition division details how R1 clearly discloses vertical axis washing machines and uses this as a justification for its conclusion that E1, therefore, 'clearly does not suggest the use of the described motor in horizontal axis washing machines'. The opposition division thus based its reasoning on this evidence.

3.2 In its grounds of appeal, the appellant maintained that R1 was a point of discussion neither in the written opposition procedure nor during oral proceedings before the opposition division. This was notably not contradicted by the respondent, which simply maintained that the appellant had been given ample opportunity to present arguments on E1 during the oral proceedings. However, despite being cited in E1 amongst several other documents, the content of R1 was evidently never a point of discussion before the opposition division and the appellant was given no reason to believe that the disclosure in R1 would be of any significance in the opposition division's decision. The appellant was thus not given an opportunity to present its comments on R1.

3.3 It should also be added that the further reasoning mentioned in item 2.4.1.4 of the interlocutory decision to establish that E1 was only related to vertical axis washing machines, referred to alleged commercial activities since 1986 of the assignee named in E1, for which no evidence has been given by the opposition division. Also in this regard, the appellant argued that it was not given any opportunity to present its comments. The respondent did not dispute this and there is indeed no indication in the minutes or the decision that could allow the Board to arrive at a different conclusion.

3.4 It thus follows that the opposition division used the content of R1 and the alleged commercial activities of the assignee named in E1 in its decision without the appellant at least having been given the chance to be heard on its content, contrary to Article 113(1) EPC. A party being denied their right to be heard amounts to a substantial procedural violation.

3.5 According to Rule 103(1)(a) EPC, the appeal fee shall be reimbursed in full .... if such reimbursement is equitable by reason of a substantial procedural violation. It is clear from the opposition division's reasoning in its decision that the appellant being denied its right to be heard with respect to R1 and the alleged commercial activities of the assignee in E1 had a direct influence on the interpretation of E1 (see point 2.4.1.4 of the opposition division's decision), and thus also had a causal effect on the decision regarding both novelty (see points 2.4.1.4 and 2.4.1.5) and inventive step (see point 2.4.8). In view of the above, the Board finds it equitable by reason of the substantial procedural violation for the appeal fee to be reimbursed in full.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.

3. The appeal fee is to be reimbursed.