T 2610/18 - Rule 82(1) case

 Key points

•  Rule 82(1) is rarely applied in practice because most often parties request oral proceedings in opposition. However, in this case, no oral proceedings were requested and the OD issued the interlocutory decision that taking into account the amendments made by the proprietor, the patent and the invention to which it relates meet the requirements of the EPC. This decision was issued in writing about 10 months after the proprietor's response was forwarded to the opponent, without oral proceedings. No oral proceedings were requested (by the opponent; the patentee's amended main request was granted).
• The opponent appeals.
• The Board finds the above to be a substantial procedural violation, in particular of Rule 82(1) EPC.
• " The Board finds that the issuing of a communication under Rule 82(1) EPC was required in that specific situation. Rule 82(1) EPC reads as follows: "Before the opposition division decides to maintain the European patent as amended, it shall inform the parties of the text in which it intends to maintain the patent, and shall invite them to file their observations within two months if they disapprove of that text." Rule 82(1) EPC ensures that the right of the parties to be heard is respected in opposition proceedings before any decision is taken. In the present case, no objection against the amended main request was raised by the opponent and - evidently - the opposition division had no such objection either. However, contrary to the stipulations of Rule 82(1) EPC, the parties had not been informed of the opposition division's intention to maintain the patent on the basis of the amended main request and on the description and drawings as contained in the specification. Furthermore, the parties were not invited to comment on that text within a specified period as also foreseen in Rule 82(1) EPC."
• As a comment, the purport of Rule 82(1) is not very clear to me, except for the case where the OD proposes amendments of their own motion in written proceedings.
• Van Empel, para. 480, explain the original idea as follows: “It may also be, however, that the Opposition Division finds that the patent can be maintained, provided it is amended to some extent. Normally this amendment takes form progressively in the course of communications between the Opposition Division and parties concerned. However, at a certain moment the former should make up its mind and state that it is of the opinion that the patent as amended in the indicated way can be maintained. However, again the basic principle of Article 113(2) comes into play, and thus the Opposition Division must submit the envisaged text of the amended patent to the patentee for approval [].* Curiously, in this regard a similar position has been given to opponents. According to Rule 58(4) [EPC 1973], they also are requested to state their observations on the text which is envisaged by the Opposition Division."
• * = This obviously refers to the second alternative in Art. 113(2), i.e. to amendments proposed by the OD of own motion: " The European Patent Office shall examine, and decide upon, [] the European patent only in the text submitted to it, or agreed, by [] the proprietor of the patent", because if the patentee submitted the text, no further approval of the text by patentee is required under Article 113(2) EPC. 
• That's why the Rule 82(1) EPC communication can be dispensed with if the text is the one decided by the patentee and the opponent has been given the opportunity to comment. See G1/88, r.6: "Accordingly, Rule 58(4) EPC does not need to be applied when the patent proprietor has already given his express approval of the text in which the Opposition Division intends to maintain the patent in accordance with Article 102(3) EPC. Irrespective of this, the opponent must have had - or be given - sufficient opportunity, according to the circumstances, of commenting on the new text. He can be given this opportunity, especially where the written procedure is being used, through the application of Rule 58(4) EPC." 
• The Board is also critical that the OD had assumed that the description was not to be amended, even though patentee had not expressly stated so. This may indeed be an issue of Article 113(2) EPC. However, the patentee did not appeal and it find it not so clear whether an opponent can invoke a violation of Article 113(2). 

T 2610/18 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t182610eu1.html

Summary of Facts and Submissions

I. An appeal was filed by the opponent against the interlocutory decision of the opposition division dated 22 August 2018 in which the opposition division found that European patent No. 2 958 461 in an amended form met the requirements of the EPC.

II. The appellant (opponent) requested that the decision under appeal be set aside and the patent be revoked (main request). Furthermore, it requested reimbursement of the appeal fee due to a procedural violation. The respondent (patent proprietor) requested that the appeal be dismissed. Both parties requested oral proceedings on an auxiliary basis.

III. Under point IX of the statement of grounds of appeal the appellant pointed out in essence that the opposition division had taken a decision on the patent proprietor's amended main request without having complied with its obligation to issue a communication indicating the reasons decisive for the maintenance of the patent beforehand. The appellant noted that it had not been given the opportunity to comment on the reasons decisive for the maintenance of the patent. The appellant concluded that its right to be heard had been violated.

IV. The Board issued a communication under Article 15(1) RPBA 2020 containing its provisional opinion, in which it indicated its intention to remit the case to the department of first instance due to a procedural violation and to order reimbursement of the appeal fee. Furthermore, the parties were invited to indicate whether their requests for oral proceedings were maintained.

V. With letter of 22 June 2021 the respondent agreed to the envisaged remittal of the case to the opposition division.

VI. Due to the fact that the appellant had not withdrawn its request for oral proceedings the Board summoned the parties to oral proceedings and informed them on the restriction of the subject of the oral proceedings to the issue of the alleged procedural violation, the reimbursement of the appeal fee and the remittal of the case to the opposition division.

VII. With letter of 29 November 2021 the appellant agreed to the envisaged remittal of the case to the opposition division.

VIII. The Board subsequently cancelled the scheduled oral proceedings.

Reasons for the Decision

1. Alleged procedural violation

1.1 The basic issue to be decided in these appeal proceedings is whether or not the proceedings before the opposition division suffered from a substantial procedural violation.

1.2 The main request underlying the decision under appeal was filed by the patent proprietor with letter dated 19 October 2017 in reply to the notice of opposition. It is undisputed that independent claim 1 of the main request was substantially modified compared to the granted version.

1.3 By communication of the formalities officer dated 26 October 2017 the patent proprietor's reply to the Notice of opposition, containing inter alia the aforementioned main request, was submitted to the opponent. The opponent did not file any submission in reaction to the patent proprietor's reply. The impugned decision was issued by the opposition division on 22 August 2018 without having issued a communication containing its preliminary opinion or an invitation to the parties to submit observations prior to the despatch of its decision. In its decision the opposition division emphasised that none of the parties had requested oral proceedings.

1.4 The Board finds that the issuing of a communication under Rule 82(1) EPC was required in that specific situation. Rule 82(1) EPC reads as follows: "Before the opposition division decides to maintain the European patent as amended, it shall inform the parties of the text in which it intends to maintain the patent, and shall invite them to file their observations within two months if they disapprove of that text." Rule 82(1) EPC ensures that the right of the parties to be heard is respected in opposition proceedings before any decision is taken. In the present case, no objection against the amended main request was raised by the opponent and - evidently - the opposition division had no such objection either. However, contrary to the stipulations of Rule 82(1) EPC, the parties had not been informed of the opposition division's intention to maintain the patent on the basis of the amended main request and on the description and drawings as contained in the specification. Furthermore, the parties were not invited to comment on that text within a specified period as also foreseen in Rule 82(1) EPC.

1.5 In that regard it is also noted that the patent proprietor's main request consisted only of a set of claims but did not make reference to any version of the description and drawings, on the basis of which the patent should have been maintained. Also the issue of whether there was any need to adapt the description/drawings had never even been addressed in the proceedings. Thus, the parties were unaware of the complete text on which the impugned decision was later based. The decision under appeal thus came as a surprise to the parties and violated their right to be heard (Article 113(1) EPC).

1.6 Furthermore, the procedural handling of the opposition division is also not in line with Article 113(2) EPC. According to Article 113(2) EPC, the EPO shall examine, and decide upon, the European patent application or the European patent only in the text submitted to it, or agreed, by the applicant or the proprietor of the patent. In the present case the impugned decision was based on the description and drawings as contained in the specification, although the patent proprietor never specified any version of the description/drawings forming part of its main request. Thus, the impugned decision was issued without having clarified beforehand the question as to which pages of the description and drawings were intended to be maintained together with the amended claims.

1.7 Thus, the provisions of Article 113(1) and (2) and Rule 82(1) EPC have not been complied with. The opposition proceedings are therefore tainted by substantial procedural deficiencies.

2. Remittal of the case to the opposition division

2.1 According to Article 111(1) EPC the Board may exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution. It is thus at the Board's discretion whether it examines and decides on the case or whether it remits the case to the department of first instance.

2.2 Furthermore, according to Article 11 RPBA 2020, the Board shall not remit a case to the department whose decision was appealed for further prosecution, unless special reasons present themselves for doing so. As a rule, fundamental deficiencies which are apparent in the proceedings before that department constitute such special reasons.

2.3 The procedural defects set out above in point 1.7 amounting inter alia to a violation of the appellant's right to be heard (Article 113(1) EPC) and constitute a fundamental deficiency within the meaning of Article 11 RPBA 2020, justifying a remittal to the opposition division.

2.4 The decision to remit the case to the opposition division is not adverse to any of the parties, since both parties agreed to the remittal (cf. points V. and VII. above). Hence, the Board was in a position to issue a decision in the written proceedings without the need for oral proceedings.

3. Reimbursement of the appeal fee

3.1 According to Rule 103(1)(a) EPC the appeal fee is to be reimbursed in full where the Board deems an appeal allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

3.2 Since the Board has come to the conclusion that a substantial procedural violation has occurred, due to which the decision under appeal is to be set aside, reimbursement of the appeal fee in full is equitable in accordance with Rule 103(1)(a) EPC.

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 appeal fee is to be reimbursed.