T 0602/18 - Res judicata

Key points

• This is the second appeal in this opposition case. In T 303/13, the Board had remitted the case with the "with the order to maintain the patent in amended form on the basis of claims 1 to 5 of auxiliary request 6, filed with the letter dated 26 April 2013, and the description and figures to be adapted" .
• In the decision of the OD, " the cover page, the page bearing the signatures of the opposition division and the "Druckexemplar" appear contain or refer to the claim set dated 7 July 2017", however, " the reasons of the decision as well as an enclosure of the decision refer to the claim set dated 26 April 2013." The wording of these two claim sets differ.
• The decision is therefore insufficiently reasoned. " it is not unambiguously clear from the impugned decision which request it is based on. None of the other parts of the file are of help here." 
• The patentee had introduced as sole request in appeal the set of claims of 26 April 2013. The opponent argues that this claims set should not be admitted under Article 12(4) RPBA on the ground that the patentee had failed to submit them before the OD.
• The Board admits the request, because: "The present board is thus bound by the order in decision T 303/13 made by the first board (Article 111(2); T 843/91 of 5 August 1993, Reasons 3.4 citing T 79/89). In T 303/13, the first board ordered the maintenance of the patent based on the claims of what is now the respondent's sole request. Considering the above binding effect, the present board has no discretion to reject as inadmissible the claims of respondent's main request." 

EPO T 0602/18 -  link

Reasons for the Decision

1. The appeal is admissible.

2. Substantial procedural violation

2.1 The board is competent to examine whether there are fundamental deficiencies apparent in the first-instance proceedings, even in the absence of a corresponding objection by the parties (T 405/12, Reasons 3).

2.2 According to the cover page (EPO Form 2327) of the impugned decision, the "Documents for the maintenance of the patent as amended" include claims 1 to 5 as filed on 7 July 2017. According to "Sheet 2" of EPO Form 2327, the decision contains enclosures comprising "2 page(s) reasons for the decision (Form 2916)", "Documents relating to the amended text" and "sixth auxiliary request".

2.3 The "Documents relating to the amended text" (or "Druckexemplar") contain sixteen description pages dated 23 March 2017, one claims page dated 7 July 2017, and seven pages of drawings dated 23 March 2017. On sheet 1 of EPO Form 2339 bearing the signatures of the members of the opposition division, reference is made to claims 1 to 5 filed on 7 July 2017 as "currently valid documents". The enclosure mentioned on "Sheet 2" of EPO Form 2327 and referred to as "sixth auxiliary request" is entitled "SIXTH AUXILIARY REQUEST" and dated 26 April 2013. The "Ground for the decision", section "II. REASONS FOR THE DECISION" contains the following statement:

"With reference to the decision T 0303/13 of the Technical Board of Appeal 3 March 2005, the patent is maintained in amended form on the basis of claims 1 to 5 of auxiliary request 6, filed with the letter dated 26 April 2013."

2.4 In conclusion, while the cover page, the page bearing the signatures of the opposition division and the "Druckexemplar" appear contain or refer to the claim set dated 7 July 2017, the reasons of the decision as well as an enclosure of the decision refer to the claim set dated 26 April 2013.

The wording of claim 1 dated 7 July 2017 uncontestedly differs from that of claim 1 dated 26 April 2013 at least in that "the cartridge (10, 110) including a valve (168)" is replaced by "the cartridge (10, 110) includes a valve (168)" (emphasis added). The two requests in question are therefore not identical and it is not unambiguously derivable from the decision on which request the decision under appeal is actually based, i.e. which documents "are found to meet the requirements of the Convention".

2.5 A decision is not reasoned within the meaning of Rule 111(2), first sentence, EPC if it is not unambiguously clear from it, possibly after consulting other parts of the file, which request(s) - including any items such as claims, description pages and drawings - it is based on (T 405/12, supra, Reasons 6 to 16).

2.6 As set out above, it is not unambiguously clear from the impugned decision which request it is based on. None of the other parts of the file are of help here. In particular, while the appellant's last request before the issuance of the impugned decision is the set of claims dated 7 July 2017, the communication under Article 101(1) and Rule 81(2) to (3) EPC issued by the opposition division and dated 7 August 2017 states that the respondent had been invited "to adapt only the description and the figures" (emphasis in the original) and filed "a set of claims equivalent to that of the auxiliary request 6".

From these facts, it can be concluded, at most, that it did not matter to the opposition division which claim set the decision was based on, since it considered both claim sets to be "equivalent" without giving any reasons for this conclusion, especially when the order of the board in its decision T 303/13 dated 29 October 2015 was unambiguously clear and referred to auxiliary request 6 of 26 April 2013.

2.7 The decision therefore lacks sufficient reasoning within the meaning of Rule 111(2), first sentence, EPC. Thus, the opposition division committed a substantial procedural violation, and fundamental deficiencies in the first-instance proceedings are apparent.

3. No remittal

3.1 Pursuant 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.

3.2 Both parties requested the case not to be remitted for further prosecution and to be finally dealt with by the board. These requests, and the fact that the present appeal is the second appeal in these proceedings, are special reasons within the meaning of Article 11 RPBA. The board therefore decided not to remit the case to the department of first instance for further prosecution, but to reach a final decision.

4. Admittance of the respondent's sole request

4.1 The appellant requests that the respondent's sole request be rejected as inadmissible pursuant to Article 12(4) RPBA. It does not object to the adapted description or the adapted drawing sheets but argues that, in the proceedings before the opposition division, after remittal, the respondent had not requested the maintenance of the patent based on the wording of the claims of the now sole request, i.e. the claims referred to in the order of decision T 303/13. As the respondent could and should have requested this in the proceedings before the opposition division, but did not, the respondent's sole request should not be admitted into these appeal proceedings pursuant to Article 12(4) RPBA.

4.2 The present appeal proceedings concern a decision taken by the opposition division after remittal by a first board of appeal. The present board is thus bound by the order in decision T 303/13 made by the first board (Article 111(2); T 843/91 of 5 August 1993, Reasons 3.4 citing T 79/89). In T 303/13, the first board ordered the maintenance of the patent based on the claims of what is now the respondent's sole request. Considering the above binding effect, the present board has no discretion to reject as inadmissible the claims of respondent's main request. As to the description and the drawings, these were filed in the first-instance proceedings and, thus, Article 12(4) RPBA does not apply. Moreover, it is noted that the appellant does not object to the description or the drawings in substance.

4.3 For these reasons, the board rejected the appellant's request to hold the respondent's sole request as inadmissible.

5. Reimbursement of the appeal fee

5.1 The board may, even in the absence of a request to this effect, examine ex officio whether reimbursement of the appeal fee is equitable by reason of a substantial procedural violation (see Case Law of the Boards of Appeal, 8th edition, IV.E.8.2.1).

5.2 For the reasons set out above, the board considers the reimbursement of the appeal fee equitable (Rule 103(1)(a) EPC). The appeal fee is thus to be reimbursed.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance

with the order to maintain the patent in amended form on the

basis of the following:

Claims 1 to 5 of the request as referred to in the order of

the decision of 29 October 2015 in case T 303/13 and the

description, pages 1 to 16, and drawing sheets 1 to 7, both

submitted with letter dated 21 March 2017.

3. The appeal fee is to be reimbursed.