T 2371/18 - No duty to monitor the online file

 Key points

• “For the purposes of Article 113(1) EPC, parties and their representatives have no duty to monitor the proceedings themselves by regularly inspecting the electronic file (cf. R 4/17, point 4 of the reasons)”
• “In the case at hand, auxiliary request I was filed before the expiry of the deadline the opposition division had set under Rule 116(1) EPC. It was therefore not filed late by the patent proprietor. Auxiliary request I also addressed deficiencies which had been identified by the opposition division, and the opposition division gave the opponent the opportunity to comment on the admittance of auxiliary request I (see point 7 of the minutes of the oral proceedings before the opposition division).”
• The Board does not comment on the Rule 79 response period.
• “The opposition division further stated in its written decision that three weeks [between receipt of the AR by the opponent and the oral proceedings] were sufficient for the opponent to analyse the new request. In this context, it referred to the extent of the amendments carried out and to the aid provided by the patent proprietor's comparison table (see points 15.1 and 16.1 of the decision under appeal), as well as to carrying out a search if deemed necessary by the opponent []. Thereby, the opposition division applied the correct principles and addressed the opponent's main arguments. The Board thus concludes that the opposition division exercised its discretion with regard to the request for postponement neither according to the wrong principles nor in an unreasonable way which would have exceeded the proper limits of its discretion. In this context, it is not for the Board to say whether a longer period of preparation - which could have been achieved by setting an earlier final date for making written submissions under Rule 116(1) EPC - may have been more appropriate in the given circumstances.”
• I note that it seems this Board assesses alleged substantial procedural violations by the OD in a deferential way. The Board does not examine whether the 3 weeks were actually sufficient to satisfy the opponent's right to be heard, only that the OD said so and gave reasons. 

T 2371/18
https://www.epo.org/law-practice/case-law-appeals/recent/t182371eu1.html

6. Right to be heard and reimbursement of the appeal fee

6.1 In essence, the opponent argued that three weeks between having been informed of the contents of auxiliary request I on 13 February 2018 and the oral proceedings on 7 March 2018 had not been a sufficient time to react to auxiliary request I, in particular in view of the complexity of the amendments contained therein. Therefore, the opposition division should have either not admitted auxiliary request I into the proceedings or postponed the oral proceedings. The failure to do neither constituted a violation of their right to be heard under Article 113(1) EPC.

6.2 Both the decision whether or not to admit a late-filed submission and the decision whether or not to postpone oral proceedings are discretionary decisions by the opposition division. According to established case law, the departments of first instance have a certain degree of freedom in exercising their discretionary power. A board of appeal should only overrule the way in which a department of first instance has exercised its discretion when deciding on a particular case if the Board concludes that it has done so according to the wrong principles, or without taking into account the right principles, or in an unreasonable way, and has thus exceeded the proper limits of its discretion(G 7/93, point 2.6 of the reasons; see also Case Law of the Boards of Appeal, 9th edition, IV.C.4.5.2)).

6.3 In the case at hand, auxiliary request I was filed before the expiry of the deadline the opposition division had set under Rule 116(1) EPC. It was therefore not filed late by the patent proprietor. Auxiliary request I also addressed deficiencies which had been identified by the opposition division, and the opposition division gave the opponent the opportunity to comment on the admittance of auxiliary request I (see point 7 of the minutes of the oral proceedings before the opposition division). Moreover, the opposition division considered the opponent's arguments in the decision under appeal to an extent which allows the Board to review that decision. Hence, no substantive procedural violation occurred in these regards. For the same reason, the opponent's request not to admit auxiliary request I - which is the request on which the decision under appeal is based - cannot be granted either.

6.4 In the Board's view, the main thrust of the opponent's allegation that a substantial procedural violation occurred, concerns the opposition division's decision not to grant the opponent's request to postpone the oral proceedings. In this context, the opposition division referred to the possibility to inspect the online European Patent Register and to the availability of a register monitoring tool (see point 15.1 of the decision under appeal). Because of these possibilities, the opposition division indicated that the opponent had a full month before the oral proceedings to consider auxiliary request I after it had been filed on 6 February 2018.

6.5 This is not correct. For the purposes of Article 113(1) EPC, parties and their representatives have no duty to monitor the proceedings themselves by regularly inspecting the electronic file (cf. R 4/17, point 4 of the reasons). Hence, the opponent did not have a month, but three weeks to analyse and consider auxiliary request I before the oral proceedings in the opposition proceedings.

6.6 Contrary to the opponent's opinion it does, however, not per se constitute a substantive procedural violation that the opposition division notified the opponent only by registered letter of the submission containing auxiliary request I, instead of in addition by fax immediately after receipt of that submission. Neither is it a violation of the principle of equal treatment that the opposition division did not notify the opponent by fax of a submission of the patent proprietor which was filed before the final date set under Rule 116(1) EPC, but did notify the patent proprietor by fax of a submission of the opponent which was filed after that date.

6.7 The opposition division further stated in its written decision that three weeks were sufficient for the opponent to analyse the new request. In this context, it referred to the extent of the amendments carried out and to the aid provided by the patent proprietor's comparison table (see points 15.1 and 16.1 of the decision under appeal), as well as to carrying out a search if deemed necessary by the opponent (see point 20.4 of the decision under appeal). Thereby, the opposition division applied the correct principles and addressed the opponent's main arguments. The Board thus concludes that the opposition division exercised its discretion with regard to the request for postponement neither according to the wrong principles nor in an unreasonable way which would have exceeded the proper limits of its discretion. In this context, it is not for the Board to say whether a longer period of preparation - which could have been achieved by setting an earlier final date for making written submissions under Rule 116(1) EPC - may have been more appropriate in the given circumstances.

6.8 In conclusion, no substantive procedural violation occurred which justifies the reimbursement of the appeal fee under Rule 103(1) (a) EPC.

7. Request for remittal to an opposition division in a different composition

The opponent requests that the case is remitted to an opposition division in a different composition.

In the absence of a substantial procedural violation (see point 6 above), there is no reasonable ground to suspect that the opponent would not receive a fair hearing if the case were re-heard before the same composition of opposition division (see Case Law of the Boards of Appeal, 9th edition, III.J.4.2).

For this reason, the case is not remitted to an opposition division in a different composition.

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 for further prosecution.

3. The request that the case be remitted to the opposition division in a different composition is refused.

4. The request for reimbursement of the appeal fee is refused.