T 0666/19 - Partial refund appeal fee for each appellant

Key points

• Both the patentee and the opponent appeal. The proprietor announces that it will not attend the oral proceedings. Both appeal fees are refunded at 25%:  " it makes no difference that only one of the appellants actively withdrew its request for oral proceedings"
• "The proprietor's announcement that it would not attend oral proceedings is equivalent to a withdrawal of its request that oral proceedings be held"
• "The Board understands opponent 1's request, in the statement of grounds, that a date be set for oral proceedings, in the context of its previous conditional request. This understanding is corroborated by the reference, in opponent 1's latest submission, to the possibility that the oral proceedings might not take place"
• "This means that opponent 1 asks that a date be set for oral proceedings if the Opposition Division's decision is not set aside and the patent revoked. In view of the conclusion under point 4 above [that the patent is to be revoked], this condition does not apply."
• "Consequently, oral proceedings were cancelled and the decision is issued on the basis of the parties written submissions."
• "Moreover, since the proprietor's withdrawal of its request for oral proceedings was made within one month of notification of the communication issued by the Board in preparation for the oral proceedings, both conditions of Rule 103(4)(c) EPC, that (with emphasis by the Board) any request for oral proceedings is withdrawn ... and no oral proceedings take place, are met; it makes no difference that only one of the appellants actively withdrew its request for oral proceedings. Consequently, each of the appeal fees is to be reimbursed at 25%. (cf. T 517/17, reason 6; T 202/18, reason 1; cf. T 488/18, reason 8)."
• 
  

EPO T 0666/19 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t190666eu1.html

Reasons for the Decision

1. The preliminary opinion, partly reproduced above, expressed and explained the Board's view that none of the requests on file was allowable.

2. Reference is made, in particular, to the following paragraphs reproduced above:

(a) paragraphs 11 - 13 concerning sufficiency of disclosure (cf. Articles 83 and 100(b) EPC),

(b) paragraphs 14 - 17 and 21 concerning added subject-matter (cf. Articles 100(c) and 123(2) EPC), and

(c) paragraphs 27 - 42 concerning lack of novelty and inventive step having regard to the disclosure of D2 (cf. Articles 54, 56 and 100(a) EPC).

3. The proprietor has not commented on, let alone contested, this preliminary opinion.

4. After reconsideration, the Board does not see any reason to depart from it.

5. It is, then, concluded that none of the requests on file is allowable.

6. The proprietor's announcement that it would not attend oral proceedings is equivalent to a withdrawal of its request that oral proceedings be held (Case Law of the Boards of Appeal, 9th ed., III. C.4.3.2).

7. The Board understands opponent 1's request, in the statement of grounds, that a date be set for oral proceedings, in the context of its previous conditional request. This understanding is corroborated by the reference, in opponent 1's latest submission, to the possibility that the oral proceedings might not take place (item XXIV above).

8. This means that opponent 1 asks that a date be set for oral proceedings if the Opposition Division's decision is not set aside and the patent revoked. In view of the conclusion under point 4 above, this condition does not apply.

9. Consequently, oral proceedings were cancelled and the decision is issued on the basis of the parties written submissions.

10. Moreover, since the proprietor's withdrawal of its request for oral proceedings was made within one month of notification of the communication issued by the Board in preparation for the oral proceedings, both conditions of Rule 103(4)(c) EPC, that (with emphasis by the Board) any request for oral proceedings is withdrawn ... and no oral proceedings take place, are met; it makes no difference that only one of the appellants actively withdrew its request for oral proceedings. Consequently, each of the appeal fees is to be reimbursed at 25%. (cf. T 517/17, reason 6; T 202/18, reason 1; cf. T 488/18, reason 8).

Order

For these reasons it is decided that:

1. The decision is set aside.

2. The patent is revoked.

3. Both appeal fees are reimbursed at 25%.