T 0598/19 - Whose request for oral proceedings?

 Key points

• The Board considers the 25% reimbursement of the appeal fee in case of withdrawal of "any" request for oral proceedings.
• “In the case in hand, the appellant had already withdrawn its request for oral proceedings before being notified of the [Board's preliminary opinion]. The respondent withdrew its request within one month of the notification of said communication. Therefore the oral proceedings could be cancelled and the decision issued in writing.”
• “The board agrees with the rationale of [T 0488/18] that the wording "any" (or "ein etwaiger" in German or "une" in French) in Rule 103(4)(c) EPC does not imply that the request for oral proceedings has to be the appellant's [own] request for oral proceedings.”
• “Furthermore as a result of the appellant's (opponent's) withdrawal of its request for oral proceedings, it is obvious that it had itself already become active and would not, only, benefit of the withdrawal of the request for oral proceedings of the respondent (patent proprietor) which occurred after the notification of the Board's communication. In this respect, this case differs from the facts of T 0795/19 and the appeal fee under Rule 103 (4)c) EPC is to be refunded.”
• As a comment, I don't understand the Board's reasoning. If T0488/18 is right, it does not matter what the appellant did and the respondent's withdrawal of the respondent's request for oral proceedings is enough. 
• It is not clear to me if the Board considers a withdrawal of a request for oral proceedings (by the appellant, for that matter) prior to notification of the preliminary opinion is (as such) sufficient under Rule 103(4)(c). 
• The present decision appears to show how complex the application of Rule 103(4)(c) EPC is. 

T 0598/19

https://www.epo.org/law-practice/case-law-appeals/recent/t190598eu1.html

Auxiliary requests 4 to 13

4. Since auxiliary request 3 (highest ranked request) is allowable, the auxiliary requests 4 to 13 need not be discussed.

5. Rule 103(4)(c) EPC

According to Rule 103 (4)(c) EPC the appeal fee shall be reimbursed at 25% if any request for oral proceedings is withdrawn within one month of notification of the communication issued by the Board of Appeal in preparation for the oral proceedings, and no oral proceedings take place.

In the case in hand, the appellant had already withdrawn its request for oral proceedings before being notified of the communication pursuant to Article 15(1) RPBA 2020 issued by the board in preparation for the oral proceedings. The respondent withdrew its request within one month of the notification of said communication. Therefore the oral proceedings could be cancelled and the decision issued in writing.

The situation is very similar to that in T 488/18 (Reasons 8) except that in that case the appellant had not filed a request for oral proceedings at all. The board agrees with the rationale of that decision that the wording "any" (or "ein etwaiger" in German or "une" in French) in Rule 103(4)(c) EPC does not imply that the request for oral proceedings has to be the appellant's request for oral proceedings.

Furthermore as a result of the appellant's (opponent's) withdrawal of its request for oral proceedings, it is obvious that it had itself already become active and would not, only, benefit of the withdrawal of the request for oral proceedings of the respondent (patent proprietor) which occurred after the notification of the Board's communication. In this respect, this case differs from the facts of T 0795/19 and the appeal fee under Rule 103 (4)c) EPC is to be refunded.

Therefore 25% of the appeal fee is reimbursed.

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the opposition division with the order to maintain the patent in amended form on the basis of auxiliary request 3 submitted on 21 September 2018 during the opposition proceedings and a description to be adapted accordingly.

3. 25% of the appeal fee is reimbursed.