T 1455/14 - Correcting an error: threefold procedural violation

Key points

• In this opposition appeal, the Opposition Division had used "its discretion to correct this obvious error" in the text of claim 1 after the oral proceedings had been closed. The Board finds this to constitute three procedural violations.
• " there is no basis in the EPC for such an alleged discretion of the Oppo­si­tion Division. Furthermore, even if the opposition division considered there to be an obvious error, there was no corre­spon­ding request according to Rule 139 EPC on the part of the patent proprietor who may not have been aware of the existence of such an error. 
• This results in a threefold procedural violation, because the written decision is based on a text amended by the opposition division" 

EPO T 1455/14 - link

Reasons for the Decision

1. Procedural violations

1.1 According to point 8 of the contested decision, the "Opposition Division uses its discretion to correct this obvious error" in the text of claim 1 after the oral proceedings had been closed. However, there is no basis in the EPC for such an alleged discretion of the Oppo­si­tion Division.

Furthermore, even if the opposition division considered there to be an obvious error, there was no corre­spon­ding request according to Rule 139 EPC on the part of the patent proprietor who may not have been aware of the existence of such an error.

This results in a threefold procedural violation, because the written decision is based on a text amended by the opposition division:

- which was not submitted by the patent proprietor [The reasoning of the decision is thus not based on an actual request of the patent proprietor - fundamental procedural violation number 1],

- on which the opponent had had no opportunity to comment [The opponent's right to be heard has been violated - fundamental procedural violation number 2] and

- which does not correspond to the decision announced at the end of the oral proceedings (Minutes, page 4, last paragraph) [The decision as announced at the end of the oral proceedings is not reasoned in wri­ting - fundamental procedural viola­tion number 3].

1.2 According to Article 11 RPBA, a board shall remit a case to the department of first instance if fundamental deficiencies are apparent in the first instance procee­dings, unless special reasons present themselves for doing otherwise.

1.2.1 The board concurs with the opposition division that the text submitted by the patent proprietor does appear to contain a linguistic error in the text

"wherein said front end of the pipe fitting is the part of the pipe which ..." (emphasis added by the board).

The text "said front end of the pipe fitting is the part of the pipe" does not make sense, because it simultaneously and inconsistently refers the "front end" to two different entities, namely the "pipe fitting" and the "pipe".

1.2.2 Since the claim concerns a "pipe fitting" and not a "pipe", the kind of amendment made by the opposition division would appear to be plausible. In this sense the root cause for the procedural vio­la­tions appears to be trivial. Thus remitting the case to the first instance would merely needlessly delay the procee­dings for all parties.

1.2.3 These procedural violations were not objected to in the grounds of appeal or in the res­ponse thereto:

[...]

Neither party requested remittal to the first instance.

1.2.4 The board thus has the above special reasons to believe that the parties are not concerned by the pro­cedural violations and instead wish to have the subs­tantive issues discus­sed before the board.

1.3 In consequence, the board does not remit the case to the first instance and instead proceeds with the substantive issues discussed by the parties on appeal.