T 1596/14 - Different notification dates

Key points

• In this opposition appeal, the Board gives the following comments obiter "Appellant I (patent proprietor) objected to the fact that the decision of the opposition division was sent to them with a date of 9 July 2014 and resent only to appellant II (opponent) at the later date of 22 July 2014. This situation arose because the opponent had changed address without the EPO being aware of this, so that the decision could not be delivered on the first attempt."
• " Thus, it appears that appellant II had nine days more than appellant I to file their grounds (and theoreti­cally eighteen days more with regard to the calculation of the time limit)." 
• " Nevertheless, appellant I did not provide evidence that this situation was detrimental to their position as ap­pel­lant. It is correct that in the present case appel­lant II knew appellant I's argumentation before filing their own statement of grounds" 
• " But there is no general rule that in each and every ap­peal proceedings the parties file their statement of grounds in the last minute of the last day of the time limit. In fact, the situation would have been the same if appellant I had filed their statement of grounds, for example, nine days before the expiration of the time limit, e.g. 10 November 2014 and appellant II then only filed their statement on the last day of the "first" time limit, i.e. 19 November 2014." 
• " There is no specific sanction or remedy foreseen in the EPC for this situation and it seems difficult to as­sume that appellant I's suggestion to re-send the decision with a new common notification date would be a remedy, since the parties are by now already aware of each other's arguments."  (I think the Board uses "now" to refer to the date of the appeal decision. Back in 2014, resending the written decision to both parties would have been an eminently sensible thing to do).
• " Appellant I further questioned form 23XX of 22 July 2014 in Epoline which suggests that the outcome of the opposi­tion proceedings was also notified to the patent proprietor on 22 July 2014 even though this was never received by appellant I: Form 23XX in an internal form with the addresses of the parties to the opposition proceedings and is presumably generated automatically by the computer systems in consequence of the second attempt to notify the opponent of the outcome of the opposi­tion procee­dings, once the valid address of the opponent had beco­me available." (I think that this means that actually in 2014, the formalities officer should have resent the decision to both parties as Form 23XX instructs).
• Furthermore, a request for apportionment of costs: " Appellant II objected to appellant I's fifteen requests filed with the grounds of appeal which were subse­quently reduced to only three requests one month before the oral proceedings before the board of appeal. [...] When taking into account the events during the opposi­tion procedure (see point 2.3 above), the board does not consider such requests to be excessive or that they constitute an abuse of procedure. In consequence, the request for the apportionment of costs for preparing a response to the fifteen requests filed with the grounds of appeal is refused. 

EPO T 1596/14 -  link

Appellant I is the patentee, Appellant II is the opponent.

Reasons for the Decision

1. Admissibility of the appeal of the patent proprietor

The opposition division's finding of lack of inventive step of claim 1 as granted starting from document D16 assumed that the feature ("in such a way that the force required for the securing of the insert pipe (21) in the second position is absorbed by the outer surface (4) of the pipe (1, 1*)") of claim 1 as granted was disclosed in document D16. Should this not be the case, then the opposition division's decision in this respect cannot stand as it is, because it necessarily does not take into account the new arguments con­cer­ning the above feature advanced by appellant I on appeal.

By contesting the disclosure of the above feature in document D16, appel­lant I has provided at least one legal or factual ground as to why the deci­sion of the opposition divi­sion should be set aside. The requirements of rule 99(2) EPC are satisfied.

There is thus no reason not to admit the appeal of appellant I into the proceedings (rule 101(1) EPC): the appeal of appellant I is admitted.

2. Admissibility of the new main request and of amended auxiliary request I

2.1 According to article 13(3) of the rules of procedure of the boards of appeal (RPBA), "amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings".

This is not the case with the new main request or with amended auxiliary request I, because the set of claims corresponding to the new main request was already filed with the grounds of appeal as auxiliary request III. Similarly, the set of claims corresponding to amended auxiliary request I concern a minor amendment to the claims according to the new main request, in reaction to an objection under article 123(2) EPC raised by appellant II. The new main request and the amended auxi­liary request I limit appellant I's previous requests in reaction to the objections raised by appellant II and repeated in the preliminary opinion of the board. These requests thus do not raise issues which the Board or the other party cannot reasonably be expected to deal with without adjournment of the oral proceedings. In particular, amended auxiliary request I does not create a new case and cannot surprise appellant II. In consequence, the article 13(3) RPBA is not appli­cable to the new main request and the amended auxiliary request I.

2.2 According to article 13(1) RPBA, "any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the Board's discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy".

Since the new main request and the amended auxiliary request I are based on auxiliary request III filed with the grounds of appeal and limit appellant I's previous requests in reaction to the preliminary opinion of the board, neither the complexity of the new subject-matter submitted, nor the current state of the proceedings nor the need for procedural economy stand in the way of admitting these requests.

Appellant II's opinion that amended auxiliary request I filed during the auxiliary proceedings [sic - likely "appeal proceedings" was intended] constitutes an intentional abuse of procedure is merely speculative, since there is no evidence that the omission of the feature from claim 9 of the new auxiliary request I is not merely accidental. Correcting such an obvious error does not amount to an abuse of procedure.

Furthermore, appellant II correctly presumed that the previous auxiliary requests of appellant I were with­drawn. Appellant I confirmed his request situation as soon as the doubts of appellant II in this respect became known to him.

Thus there is no reason why the board should not admit the new main request and the amended auxiliary request I on this basis.

2.3 According to article 12(4) RPBA, the board has the power "to hold inadmissible facts, evidence or requests which could have been presented in the first instance proceedings".

The first instance proceedings in this respect can be summarised as follows:

- The provisional opinion of the opposition division of 13 February 2014 issued with the summons to oral proceedings was favourable to appellant I.
- With letter of 1 May 2014 appellant II filed document D16 and briefly outlined a lack of novelty with respect to document D16.
- With fax of 13 May 2014 appellant I reacted to (late filed) document D16 and argued that the subject-matter of granted claim 1 was new with respect to this document.
- With a 27 page long letter of 13 May 2014 appellant II filed further documents D17 to D20 (points 1.2 and 1.3) and inter alia argued in detail a lack of novelty with respect to document D16 (point 3.1) and a lack of inventive step with respect to docu­ment D16 in combi­nation with document D5 (point 11).
- With a further letter of 16 May 2014 appellant II reacted to appellant I's fax of 13 May 2014 and argued in favour of the admissibility of document D16 and the lack of novelty of the subject-matter of granted claim 1 with respect to document D16.
- With fax of 10 June 2014 appellant I reacted to appellant II's letter of 13 May 2014 and protested about the amount of material provided by appellant II therein and inter alia re-iterated its argument that the subject-matter of granted claim 1 was new with respect to document D16.

Appellant I in particular argued that [in the fax of 10 June 2014]:

- "in terms of the number of pages used for sub­mit­ting the views of the Opponent, many many more pages have been submitted after the end of the opposition term as compared to the number of pages submitted before the end of the opposition term";
- "the total amount of information and documenta­tion of which it is as yet unclear whether this will be admitted into the proceedings or not is consequent­ly much larger than the amount of information and documentation of which it is clear that it has been admitted into the procee­dings"; and
- "the annex to the Summons aims to assist parties in preparation for the oral proceedings. Under the present circumstances, it is very unclear what the Opposition Division will consider as important for discussing during the oral procee­dings".

- During the oral proceedings on 13 June 2014 docu­ment D16 was admitted into the proceedings and the subject-matter of claim 1 of the patent as granted was found to lack an inventive step with respect to document D16 in combination with document D5.

Thus, although appellant I could theoretically have prepared suitable fallback requests in view of document D16, the board does not consider that it was readily evident for appellant I to anticipate which of the numerous late filed additional lines of argumentation of appellant II might succeed (even though the preli­minary opinion of the opposition division was in favour of appellant I), while preparing for all possible out­comes would not appear to be practical for the same reasons, i.e. because the large number of late filed additional lines of argumentation of appellant II.

2.4 In consequence, the board uses its discretion to admit the new main request and amended auxiliary request I into the proceedings.

7. Amended auxiliary request I - Claims 1 and 9 - Inventive step (article 56 EPC 1973)
[...]

In consequence, the subject-matter of claim 1 and 9 does not lack an inventive step with respect to document D2 alone or in combination with document D23.

8. Amended auxiliary request I - Description

The description was amended by appellant I with respect to the claimed subject-matter and there were no more objections from appellant II.

9. Request for apportionment of costs (article 104(1) EPC)

Appellant II objected to appellant I's fifteen requests filed with the grounds of appeal which were subse­quently reduced to only three requests one month before the oral proceedings before the board of appeal.

These fifteen requests corresponded to selected permutations of only five additional features, respec­tively concerning outward bending, sealing, a lever, a support plate (i.e. granted claim 2) and a groove.

When taking into account the events during the opposi­tion procedure (see point 2.3 above), the board does not consider such requests to be excessive or that they constitute an abuse of procedure. In consequence, the request for the apportionment of costs for preparing a response to the fifteen requests filed with the grounds of appeal is refused.

10. Obiter dictum - Concerning the fact that the opposition decision could not be notified to both parties at the same time

Appellant I (patent proprietor) objected to the fact that the decision of the opposition division was sent to them with a date of 9 July 2014 and resent only to appellant II (opponent) at the later date of 22 July 2014.

This situation arose because the opponent had changed address without the EPO being aware of this, so that the decision could not be delivered on the first attempt.

10.1 Appellant I requested "that the Board sees to a consi­de­ration of the legal constellation and provides for a view as to how appeal proceedings like the present one should be handled such that unequal treatment of the parties is resolved".

10.2 Appellant I argued that the two different notification dates of the decision to the par­ties have as conse­quence that the time limits for fi­ling a notice of appeal and the statement setting out the grounds of appeal were also different.

10.2.1 Appellant I filed their notice of appeal on 7 July 2014, two days before the date of notification of the decision to the parties on 9 July 2014.

Thus, appellant I decided to file an appeal at a very early stage even before the time limit was set to start.

Appellant II filed their notice of appeal on 28 Au­gust 2014, i.e. within the time limit as calculated from the date of 9 July 2014 (theore­tically, with regard to the second notifi­ca­tion date of the decision, the time limit was 1 October 2014).

So far the fact that the oppo­sition division notified the decision on two diffe­rent dates does not have any biasing effect. Both par­ties filed their respective appeals without any spe­cific delay or without having any apparent particular advantage or dis­ad­van­tage.

10.2.2 The situation differs slightly with regard to the time limit for filing the grounds of appeal.

Appellant I filed their statement of grounds on 19 Nov­ember 2014 which was the last day of the time limit with regard to the date of their notification of the deci­sion, i.e. 9 July 2014.

For appellant II the time limit expired on 1 December 2014 (in view of the later date of their notification of the decision of 22 July 2014) and they filed their state­ment of grounds on 28 No­vem­ber 2014.

Thus, it appears that appellant II had nine days more than appellant I to file their grounds (and theoreti­cally eighteen days more with regard to the calculation of the time limit).

Nevertheless, appellant I did not provide evidence that this situation was detrimental to their position as ap­pel­lant. It is correct that in the present case appel­lant II knew appellant I's argumentation before filing their own statement of grounds (grounds of appeal of appellant II of 28 November 2014, page 3 section "Re­gar­ding the Grounds of Appeal as filed by the Pro­prietor on November 19, 2014").

But there is no general rule that in each and every ap­peal proceedings the parties file their statement of grounds in the last minute of the last day of the time limit. In fact, the situation would have been the same if appellant I had filed their statement of grounds, for example, nine days before the expiration of the time limit, e.g. 10 November 2014 and appellant II then only filed their statement on the last day of the "first" time limit, i.e. 19 November 2014.

It is a mere assumption that in the present case the parties would have filed their respective statements of grounds simultaneously on the last day of the time limit.

Furthermore, there is no evidence that appellant II gained any advantage in knowing appellant I's argu­ments in advance.

10.3 Appellant I further argued that the parties were put on an unequal footing because business decisions might have been taken on an understanding of a legal situa­tion which later on turned to be significantly diffe­rent, such as a missed time limit for filing the state­ment of grounds by an appellant.

This argumentation is not persuasive.

Both parties were aware that they had respectively filed an appeal. Furthermore, the parties had the possibility of monitoring the procedure online.

It is not persuasive that appellant I might have taken important business decisions with regard to the patent in suit or in relation to its subject-matter such a short time before expiration of the procedural time limits, knowing that the opponent had also filed an appeal and was seeking to have the patent revoked.

Furthermore, appellant I did not provide any evidence that they took, or intended to take such business deci­sions and whether there were any consequences or pre­judices resulting from the situation.

10.4 There is no specific sanction or remedy foreseen in the EPC for this situation and it seems difficult to as­sume that appellant I's suggestion to re-send the decision with a new common notification date would be a remedy, since the parties are by now already aware of each other's arguments.

Furthermore, appellant I made general statements to the effect that the situation could lead to an unequal treatment of the parties, but in the present case no evidence was provided that a party was prejudiced.

Appellant I did not file a specific request with regard to a substantial procedural violation or inadmis­sibi­li­ty of the appeal of appellant II.

10.5 Appellant I further questioned form 23XX of 22 July 2014 in Epoline which suggests that the outcome of the opposi­tion proceedings was also notified to the patent proprietor on 22 July 2014 even though this was never received by appellant I: Form 23XX in an internal form with the addresses of the parties to the opposition proceedings and is presumably generated automatically by the computer systems in consequence of the second attempt to notify the opponent of the outcome of the opposi­tion procee­dings, once the valid address of the opponent had beco­me available.

10.6 Conclusion: there is no evidence or indication that the alleged unequal treatment of the parties induced by different dates of notification of the same decision was detrimental to any party's interests, and in particular, not to appellant I's interests. There do not appear to be any consequences for the admissibility of the appeals or for the due course of the ensuing appeal proceedings.