Key points
- The proprietor files a reply to the Notice of opposition without requesting oral proceedings and without filing auxiliary requests. This means that the OD can revoke the patent if one of the claims as granted is invalid in view of the objections raised by the opponent; the decision is then issued in writing.
- In this case, the written decision of the OD to revoke the patent is dated 17 March 2020 and indicates that it was handed over to the internal post of the EPO on 10 March. The proprietor filed auxiliary requests on 11 March (we don't know when the document became visible in the online file).
- G 12/91: "Internal EPO instructions make clear that a period of three days always elapses between the date-stamping of a decision and its despatch."
- As a comment, I don't know what "handed over" means in the context of the EPO's operations in March 2020, because there is a separate document in the file saying that the decision was printed (note, the Corona lockdowns may have started on 15 March 2020). Is it certain that a paper document of the decision existed on 10 March? At least for the present situation, what does "hand over" mean for electronic documents?
- The Board applies G 12/91: the OD was no longer competent to modify the decision on 11 March and did not need to consider the auxiliary requests.
- " Article 101(1), second sentence, EPC does not require the opposition division to send a communication with a preliminary opinion before giving its decision. In addition, not issuing at least one communication under Article 101(1) EPC cannot in itself substantiate an assertion of an infringement of the right to be heard (see Case Law of the Boards of Appeal of the EPO, 10th edition, 2022, IV.C.6.2).
On 4 July 2019, the opposition division had indeed issued a communication to the patent proprietor with a request to file its observations on the notice of opposition. On 4 November 2019, the patentee filed its reply to the notice of opposition. The opposition division based its decision on the grounds and evidence set out in the notice of opposition, i.e. on grounds and evidence on which the patent proprietor had already had an opportunity to present its comments. Hence, the requirements of Article 113(1) EPC are fulfilled.
As the patent proprietor had not requested oral proceedings as per Article 116(1) EPC, the proceedings could be concluded with the decision to revoke the patent in written proceedings. Hence, there was also no need to issue a summons accompanied by a preliminary opinion and fixing a final date for making written submissions according to Rule 116(1) EPC."
- The 13 auxiliary requests filed on 11 March, maintained with the Statement of grounds, are a case amendment in appeal and are not admitted under Art. 12(4) RPBA.
- The opponent's request for a cost apportionment is refused; it was based on the costs for replying to the 13 inadmissible auxiliary requests. " Article 16 RPBA 2020 lists examples of specific situations in which an apportionment of costs may be justified. The Board notes that this article mentions only amendments under Article 13 RPBA but not amendments under Article 12 RPBA - which occur at the earliest stage of the appeal proceedings.
- In any case, as submitted by the appellant, it was part of its due diligence to present (and maintain) its complete case, including all requests, with the statement of grounds of appeal in view of Article 12(3) RPBA 2020. The Board does not consider the appellant's conduct in this respect to be culpable, irresponsible, malicious or even abusive.
- Moreover, preparations for discussing the admittance and substance of auxiliary requests are part of the normal work that can be expected of any party"
1. Alleged substantial procedural violations and request for remittal
1.1 In its reply to the notice of opposition received on 4 November 2019, the patent proprietor had not requested oral proceedings or filed any auxiliary requests. On 11 March 2020, the patent proprietor filed a further submission together with six auxiliary requests.
1.2 The decision under appeal was issued without oral proceedings and only deals with the patent as granted. It does not take into account the submissions and requests of 11 March 2020 and does not give reasons for this. The decision bears the date of despatch of 17 March 2020 (date stamp on sheet 1 of Form 2331) but had been handed over to the EPO postal service on 10 March 2020 by the opposition division's formalities department (as indicated on sheet 2 of Form 2331).
1.3 With the statement of grounds of appeal (page 19, last paragraph) the appellant submitted that "[a]t the beginning of the letter dated 11 March 2020 it was also emphasized that a preliminary opinion of the Opposition Division is expected. If the Opposition Division would have issued an invitation to file observations on its understanding of granted claim 1 according to Art. 101 (1), second sentence EPC the auxiliary requests would have been considered already in the first instance, given both parties the right to be heard for the auxiliary requests".
The Board takes these statements as a rebuke of a violation of the parties' right to be heard, firstly because the opposition division did not set out its preliminary opinion together with an invitation to file observations before issuing its decision and secondly because the decision under appeal does not take into account the appellant's submissions and auxiliary requests of 11 March 2020.
In its statement of grounds of appeal, the appellant further submitted that its right to be heard had been infringed because the decision was not sufficiently reasoned. In its view, the opposition division did not reason how it came to its interpretation of certain claim features, in particular its finding that "the wording of the granted claim does not exclude the possibility of part of the stream of solid particles bypassing the heat exchange zone" (points 10.3 and 11.3). The division also failed to give reasons why the proprietor's interpretation of the patent as granted (points 10.2 and 11.2) was incorrect, why the compartments 90 of E1 embodied the claimed "outlet channel" - despite having bypass openings 84a - and why the "seal pot segment" 92b of E7 without heat exchange means could be considered the claimed "heat exchange zone".
For these reasons, the appellant requested that the case be remitted to the opposition division with the order to issue a communication under Article 101(1), second sentence, EPC, giving reasons for the division's understanding of the claim language.
1.4 Article 101(1), second sentence, EPC
Article 113(1) EPC stipulates that the "decisions of the European Patent Office may only be based on grounds or evidence on which the parties concerned have had an opportunity to present their comments". Article 101(1), second sentence, EPC requires the opposition division to invite the parties to file observations on communications from another party or issued by itself "as often as necessary" in order to satisfy the right to be heard as per Article 113(1) EPC.
However, contrary to the appellant's assertion, Article 101(1), second sentence, EPC does not require the opposition division to send a communication with a preliminary opinion before giving its decision. In addition, not issuing at least one communication under Article 101(1) EPC cannot in itself substantiate an assertion of an infringement of the right to be heard (see Case Law of the Boards of Appeal of the EPO, 10th edition, 2022, IV.C.6.2).
On 4 July 2019, the opposition division had indeed issued a communication to the patent proprietor with a request to file its observations on the notice of opposition. On 4 November 2019, the patentee filed its reply to the notice of opposition. The opposition division based its decision on the grounds and evidence set out in the notice of opposition, i.e. on grounds and evidence on which the patent proprietor had already had an opportunity to present its comments. Hence, the requirements of Article 113(1) EPC are fulfilled.
As the patent proprietor had not requested oral proceedings as per Article 116(1) EPC, the proceedings could be concluded with the decision to revoke the patent in written proceedings. Hence, there was also no need to issue a summons accompanied by a preliminary opinion and fixing a final date for making written submissions according to Rule 116(1) EPC.
1.5 Auxiliary requests and submissions of 11 March 2020
The date of 17 March 2020 stamped on sheet 1 of Form 2331 of the decision under appeal corresponds to the date of despatch of the decision. However, pursuant to decision G 12/91 (see the order and point 1 of the Reasons), the relevant date on which the decision-making process is completed and after which it is no longer possible to take account of further party submissions is the date on which the decision is handed over to the EPO postal service by the decision-taking department's formalities section. In the case in hand, the decision under appeal had been handed over to the EPO postal service on 10 March 2020 (as indicated on sheet 2 of Form 2331).
Hence, the auxiliary requests and letter filed one day later, on 11 March 2020, arrived when the decision-making process had already been completed and the proceedings before the opposition division terminated. Therefore, these submissions (including the statement at the beginning of the letter that a preliminary opinion of the opposition division was expected) could not be taken into account in the decision under appeal. In fact, the opposition division was not even competent to do so anymore. Accordingly, the fact that the auxiliary requests and the reply filed on 11 March 2020 were not taken into account in the decision under appeal and that no reasons are given for disregarding them is procedurally correct and does not violate the right to be heard.
1.6 Alleged lack of reasoning
The appellant rightfully pointed out that the requirement of a reasoned decision under Rule 111(2) EPC forms an important aspect of the right to be heard, as it allows to ascertain whether the comments submitted by the parties have been duly considered.
In the case in hand, the patent proprietor was aware of the ground (lack of novelty) and the evidence (E1, E7) submitted by the opponent. The notice of opposition also specified which specific elements of E1 and E7 were considered to correspond to the features of claim 1 as granted.
In its reply to the opposition, the patent proprietor submitted a number of arguments, which are, as conceded by the appellant, more or less correctly summarised in the decision under appeal (points 10.2 and 11.2).
In the Board's view, the decision under appeal sufficiently addresses each of these arguments in its reasons. The level of detail of the reasons corresponds to the level of detail with which the patent proprietor's arguments were presented. For example, the proprietor did not explain in more detail why, in its view, claim 1 as granted excluded the possibility of a stream of solids bypassing the heat exchange zone. The opposition division thus cannot be expected to set out in more detail why it could not derive this restriction from the wording of claim 1.
Hence, the reasoning in the decision under appeal shows that each of the comments provided by the patent proprietor was heard and duly considered.
1.7 Accordingly, in the Board's view the decision under appeal fulfils the requirement of a reasoned decision, and the right to be heard has been fully respected. The Board cannot discern any substantial procedural violation.
1.8 Without a substantial procedural violation, the Board also sees no reason to remit the case in hand to the opposition division.
2. Main request - Novelty
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