T 0641/20 - Decisions to admit of the OD

Key points

• The proprietor appeals against the decision of the OD to revoke the patent.
• The proprietor complains about the decision of the OD to admit late-filed document E6 into the procedure and requests the reimbursement of the appeal fee on the ground that it is a substantial procedural violation.
• My comment is that a decision to hold a submission of a party inadmissible can violate that party's right to be heard under Article 113(1) EPC and that if the document is admitted, the right to be heard of the other party can be violated by giving that other party insufficient time to reply, i.e. by taking the decision on the merits too quickly, but not by the decision to admit a document. 
• The appeal decision does not indicate that the proprietor complains specifically about the OD giving him (them?) insufficient time to react to E6 in the first instance proceedings.
• The Board, in machine translation: "The question of whether a discretion was exercised correctly, for example taking the correct criteria into account, is a substantive question of a substantive legal nature and not a procedural law one. Therefore, a substantively incorrect discretionary decision, which was made with the correct application of the procedural rules of the EPC, does not constitute a procedural defect within the meaning of Rule 103(1)(a) EPC."
• "the [proprietor] argued that the E6 does not meet the criterion of prima facie relevance because it does not obviously anticipate all the features of claim 1 of auxiliary request 3 in a way that is detrimental to novelty. The approval was therefore an error of judgment on the part of the opposition division and consequently a substantial procedural violation.
• The Board, hence, sees no substantial procedural violation in how the OD handled document E6.
• Under Art. 12(1) RPBA, E6 is also part of the appeal proceedings. 
  
  
• The OD introduced document E4 into the procedure of own motion.
• "The E4 was introduced into the opposition proceedings ex officio by the opposition division in its decision of June 28, 2018 with reference to the principle of official investigation pursuant to Article 114(1) EPC."
• "[Ex officio] new submissions [by the OD] are possible if prima facie there are compelling reasons to suggest that they are relevant and would completely or partially conflict with the maintenance of the patent (see also T 1002/92, point 3.2 of the reasons)."
• The OD found E4 to be novelty-destroying.
• "The introduction of a new document by the opposition division cannot, in principle, constitute a procedural defect. This applies at least if the criterion of “prima facie relevance” is the basis for this introduction, as was also the case by the opposition division for the introduction of the E4 into the proceedings"
• The Board also examines whether the proprietor had sufficient time to react and finds that this was the case.
• 
  
• 
  
• EPO 

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

https://www.epo.org/de/boards-of-appeal/decisions/t200641du1

Machine translation

1. Repayment of the appeal fee

1.1 Pursuant to Rule 103(1)(a) EPC, reimbursement of the appeal fee is ordered if it is granted by the Board of Appeal and the reimbursement is equitable due to a significant procedural defect.

1.2 Under Rule 103(1)(a) EPC, reimbursement of the appeal fee is only possible if the deficiency is of a procedural nature, i.e. if the procedural provisions of the EPC were not correctly applied.

1.3 The complainant alleged a material procedural violation in relation to the following points:

1) the admission of the late submitted E6 into the procedure,

2) the introduction of the E4 by the opposition division into the proceedings,

3) the opposition division's note in its communication of April 15, 2019 under point 7, according to which it would pay attention in the further proceedings to whether future applications represent a convergent further development,

4) the lack of justification in the communication pursuant to Rule 116(1), first sentence, EPC, and

5) the non-admission of auxiliary requests 1, 2, 5 and 6 into the procedure.

1.4 Admission of the E6 into the procedure

1.4.1 The E6 was filed late by the opponent on November 7, 2018 and admitted into the proceedings by the opposition division in its discretionary decision in the oral proceedings on January 16, 2020.

1.4.2 In this regard, the complainant argued that the E6 does not meet the criterion of prima facie relevance because it does not obviously anticipate all the features of claim 1 of auxiliary request 3 in a way that is detrimental to novelty. The approval was therefore an error of judgment on the part of the opposition division and consequently a significant procedural defect.

1.4.3 The question of whether a discretion was exercised correctly, for example taking the correct criteria into account, is a substantive question of a substantive legal nature and not a procedural law one. Therefore, a substantively incorrect discretionary decision, which was made with the correct application of the procedural rules of the EPC, does not constitute a procedural defect within the meaning of Rule 103(1)(a) EPC.

1.4.4 A violation of the procedural provisions of the EPC in connection with this discretionary decision was not alleged by the appellant and is also not apparent to the board.

1.4.5 The admission of the E6 into the opposition proceedings therefore does not result in a significant procedural defect.

1.5 Introduction of E4 into the procedure

1.5.1 The E4 was introduced into the opposition proceedings ex officio by the opposition division in its decision of June 28, 2018 with reference to the principle of official investigation pursuant to Article 114(1) EPC.

1.5.2 In this regard, the appellant argued that the opposition division had "exercised its discretion under Article 114 EPC without taking into account the correct criteria and thereby exceeded its granted discretion". A serious procedural error lies in particular in the fact that the opposition division based its assessment of the prima facie relevance of E4 on an incorrect assessment of its disclosure content and therefore exceeded its discretion.

1.5.3 Article 114(1) EPC states that in proceedings before the European Patent Office, the European Patent Office shall investigate the facts of its own motion. It is not limited to the submissions or applications of those involved.

The opposition division therefore has the authority to investigate the facts of the case in the opposition proceedings ex officio.

1.5.4 When exercising this power under Article 114(1) EPC, it should be borne in mind, on the one hand, that opposition proceedings are adversarial proceedings between parties who generally represent opposing interests but who are entitled to equal treatment (G 9/ 91, point 2, last sentence of the reasons). On the other hand, the regulation of Article 114(1) EPC is intended to prevent invalid European patents from being maintained. Therefore, according to the case law of the Enlarged Board of Appeal, an opposition division may, in application of Article 114(1) EPC, raise a ground for opposition on its own initiative that has not been raised by the opponent (see G 9/91, point 16 of the Grounds).

The criterion laid down by the Enlarged Board of Appeal for this is that there must be prima facie compelling reasons why these grounds for opposition are relevant and would completely or partially prevent the maintenance of the patent (G 9/91, point 16 of the reasons).

1.5.5 Since the opposition division has the power under these conditions to put forward a new ground for opposition that has not been raised by the opponent, this must apply a fortiori to new facts, evidence and objections or lines of attack that are put forward within a ground for opposition that has already been put forward . In any case, such new submissions are possible if prima facie there are compelling reasons to suggest that they are relevant and would completely or partially conflict with the maintenance of the patent (see also T 1002/92, point 3.2 of the reasons).

1.5.6 The introduction of a new document by the opposition division cannot, in principle, constitute a procedural defect. This applies at least if the criterion of “prima facie relevance” is the basis for this introduction, as was also the case by the opposition division for the introduction of the E4 into the proceedings (decision of June 28, 2018; point 4.3.3). Whether the assessment of the prima facie relevance of the E4 was ultimately based on an incorrect assessment of its disclosure content is irrelevant from a procedural point of view (see also point 1.4.3 above).

1.5.7 Furthermore, the E4 was actually relevant to the outcome of the proceedings. As stated in the contested decision under point 3, the opposition division, after assessing all the arguments of the parties, came to the conclusion that E4 anticipated the subject matter of claim 1 in the version as granted in a way that was detrimental to novelty.

1.5.8 Of course, procedural principles must also be observed when introducing a document into the procedure. In particular, the parties involved must be given the right to be heard (Article 113 (1) EPC).

In the present case, the opposition division has already explained in detail the prima facie relevance of the E4 for the assessment of the novelty of the subject matter of the granted claim 1 in the above-mentioned decision of June 28, 2018 under point 4.3 and given the patent proprietor (appellant) the opportunity to deal with it or to respond to it to react.

This also ensured that the patent owner (complainant) had the right to be heard.

1.5.9 The introduction of the E4 by the opposition division into the proceedings does not therefore result in a significant procedural defect.