T 0898/21 - Harmless error rule

Key points

• "Harmless error is an error by a trial judge in the conduct of a trial that an appellate court finds was not damaging enough to the appealing party's right to a fair trial to justify reversing the judgment, or to warrant a new trial. Harmless errors include: technical errors that have no bearing on the outcome of the trial, ..." (https://www.law.cornell.edu/wex/harmless_error)
• The Board, in machine translation: "The board shares the appellant's [proprietor's] view that her right to be heard in accordance with Article 113(1) EPC was violated in the opposition proceedings. The opposition division stated in point 11 of the contested decision that the subject matter of claim 1 of [...]was not inventive, namely based  document  (Z1), in combination with the teaching of E4 []. The person skilled in the art would arrive at the subject matter of claim 1 without any inventive intervention."
• "The board agrees with the appellant that there is no record of the opposition division or the respondent having previously raised this objection in writing or orally. In their previous communications and in the discussion during the oral proceedings before the opposition division, only document E11 [] is mentioned as a starting point, while the question of inventive step is based on the technical knowledge or document Z1 in combination with the teaching of document E4 was not discussed according to the minutes."
• "The respondent [opponent] submitted that the outcome of the opposition division's deliberations would have been the same even if the appellant had had the opportunity to comment on this objection. [...] It is not immediately clear from the [proprietor's] arguments why the outcome of the decision would be different in the event of a remittance.  The board is not convinced by the respondent's arguments."
• "What is important is not whether the opposition division would have come to the same conclusion after hearing the parties involved on this objection, but whether the parties were given the opportunity to comment on this objection (Z1 as the closest prior art in combination with the teaching of E4). Such an opportunity was obviously not given, which was not disputed by the respondent. It should also be noted that an objection that took common general knowledge as a starting point was also not discussed in the opposition proceedings."
• The case is remitted, without a decision on the allowability of the claims. 
• Any reimbursement of the appeal fee is not discussed. 
• As a comment, I think the Board could have dealt with the allowability of the claims if the outcome had been clear. A remittal is discretionary, even in case of a substantial procedural violation.
• Whether or not indications of a different outcome are relevant for the question of reimbursement of the appeal fee in case of a remittal remains to be seen. If the Board had come to the conclusion that the claims were not allowable, the appeal would have been dismissed, and no reimbursement of the appeal fee would have been given.
• 
  

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/t210898du1

1. Right to be heard in opposition proceedings, Article 113(1) EPC

1.1 The board shares the appellant's view that her right to be heard in accordance with Article 113(1) EPC was violated in the opposition proceedings.

1.2 The opposition division stated in point 11 of the contested decision that the subject matter of claim 1 of auxiliary request 4 (which corresponds to the subject matter of claim 1 of the main request and auxiliary requests 1 to 3) was not inventive, namely based on a well-known disc brake , which includes a brake caliper designed as a sliding caliper, as shown in the document DE 29 25 785 A1 (Z1), in combination with the teaching of E4 (DE 197 06 123 A1). The person skilled in the art would arrive at the subject matter of claim 1 without any inventive intervention.

1.3 The board agrees with the appellant that there is no record of the opposition division or the respondent having previously raised this objection in writing or orally. In their previous communications and in the discussion during the oral proceedings before the opposition division, only document E11 (DE 10 2007 057 992 A1) is mentioned as a starting point, while the question of inventive step is based on the technical knowledge or document Z1 in combination with the The teaching of document E4 was not discussed according to the minutes.

1.4 The respondent submitted that the outcome of the opposition division's deliberations would have been the same even if the appellant had had the opportunity to comment on this objection. Furthermore, the contents of Z1 were considered by the opposition division to be a representation of general technical knowledge or at least used as very similar to the disclosure of E11, which had been used as the closest prior art in the objection already discussed orally and in writing. It is not immediately clear from the complainant's arguments why the outcome of the decision would be different in the event of a remittance.

1.5 The board is not convinced by the respondent's arguments. What is important is not whether the opposition division would have come to the same conclusion after hearing the parties involved on this objection, but whether the parties were given the opportunity to comment on this objection (Z1 as the closest prior art in combination with the teaching of E4). Such an opportunity was obviously not given, which was not disputed by the respondent. It should also be noted that an objection that took common general knowledge as a starting point was also not discussed in the opposition proceedings.

1.6 Consequently, the appellant did not have the opportunity to comment on the only ground on which the contested decision was based in relation to the inventive step of the subject-matter of claim 1 according to auxiliary request 4 (and according to the main request and auxiliary requests 1 to 3). This violates the right to be heard under Article 113(1) EPC and represents a significant procedural defect.

2. Referral back to the opposition division, Article 111(1) EPC and Article 11 RPBA

In the board's view, there is therefore a significant procedural defect which justifies the annulment of the contested decision and, as requested by the appellant and not objected to by the respondent, the remittance of the matter to the opposition division in accordance with Article 11 RPBA.