T 2241/19 - Choosing CPA when requested is no abandonment other attacks

Key points

• "In the notice of opposition, in point V. on page 14, the appellant [opponent]  raised an objection that the subject-matter of dependent claim 2 as granted, which is identical to claim 1 of the sole request in opposition and appeal, did not involve an inventive step in view of document E8 as closest prior art in combination with document E6. The decision under appeal does not contain any reasoning and conclusion concerning this objection, be it explicit or implicit. Therefore the decision does not meet the requirements of Rule 111(2), first sentence, EPC."
• "the final decision must address all those objections which could potentially have led to a different outcome in order to comply with the requirement of Rule 111(2) EPC. The objection in question had at least the potential to change the outcome of the case.

• " The board currently cannot discern any declaration or action by the opponent that could be taken to be an explicit or implicit abandonment of the objection of lack of inventive step in view of E8 as closest prior art in combination with document E6. In the board's view, neither the minutes nor the decision under appeal contain any explicit declaration by the opponent to this effect."

• "According to the minutes, point 10 "[the opponent] was then [after a discussion of novelty] requested to begin his arguments with the grounds relating to Art. 100(a) EPC by identifying the most promising closest prior art document and using the feature analysis as appended to the summons". In the following, objections based on E1 in combination with E10 as well as E3 in combination with E10 were discussed.

• By discussing these objections, the opponent merely followed the chairman's conduct of the oral proceedings but did not implicitly abandon any or all further objections besides those discussed. The opposition division accepted a discussion of inventive step starting from documents E1 or E3 as starting point. Due to this fact, the opponent could not assume that the opposition division had implicitly dealt with the further objection based on E8 in combination with E6 by only accepting a single piece of prior art or only exclusively accepting E1 or E3 as the starting point for the assessment of inventive step.

• According to point 28 of the minutes, the opponent declared that he had no "further objections to raise". However, objections presented in writing do not need to be repeated at the oral proceedings in order for the deciding body to have an obligation to taken them into account in the final decision, see for example decision R 5/19, reasons 3.6. Therefore, this statement also can not be considered an implicit abandonment.

• There was thus at least no clear abandonment. Therefore, the opposition division could not legitimately assume that the objection in question was abandoned. Rather in case of doubt it would have been incumbent on them to clarify the procedural situation.

It follows that the decision under appeal does not contain reasons concerning the objection of lack of inventive step based on E8 as closest prior art in combination with document E6. Not presenting reasons in the decision under appeal concerning this objection adversely affected the opponent-appellant's right to a sufficiently reasoned decision."

• The appealed decision is set aside, the case remitted, and the appeal fee reimbursed. 
• As a comment, the OD could possibly have proceeded by explicitly deciding that E1 was the closest prior art, not E8. 
• The Board does not comment on inventive step over E1. I don't know if that attack was maintained in appeal. Possibly E1 takes away inventive step, and the consideration of E8 would not change the outcome in appeal. At least the present decision leaves open the possibility that E8 is not essential for the decision in appeal because the Board, in a second appeal, revokes the patent as obvious over E1.

EPO 

The link to the decision and an extract of it can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t192241eu2

4. Substantial procedural violation

4.1 The board considers that a substantial procedural violation occurred in the opposition proceedings. The decision under appeal is not sufficiently reasoned within the meaning of Rule 111(2), first sentence, EPC, because it does not address an objection which, at least potentially, could have changed the decision.

4.2 While the appellant did not request remittal originally, the board could verify whether or not the right to a reasoned decision pursuant to Rule 111(2), first sentence, EPC was complied with by the department of first instance of its own motion, in analogy to CLBA, III.B.2.1 relating to Article 113(1) EPC.

4.3 In the notice of opposition, in point V. on page 14, the appellant raised an objection that the subject-matter of dependent claim 2 as granted, which is identical to claim 1 of the sole request in opposition and appeal, did not involve an inventive step in view of document E8 as closest prior art in combination with document E6.

4.4 The decision under appeal does not contain any reasoning and conclusion concerning this objection, be it explicit or implicit. Therefore the decision does not meet the requirements of Rule 111(2), first sentence, EPC.

4.5 The board is aware that the opposition division informed the parties in point 6.3.1 of the annex to the summons to oral proceedings dated 15 June 2018 of their preliminary opinion according to which the subject-matter of claim 1 of the sole request appeared to involve an inventive step in view of document E8 in combination with E6.

However, the final decision must address all those objections which could potentially have led to a different outcome in order to comply with the requirement of Rule 111(2) EPC. The objection in question had at least the potential to change the outcome of the case.

4.6 The board currently cannot discern any declaration or action by the opponent that could be taken to be an explicit or implicit abandonment of the objection of lack of inventive step in view of E8 as closest prior art in combination with document E6.

4.6.1 In the board's view, neither the minutes nor the decision under appeal contain any explicit declaration by the opponent to this effect.

4.6.2 They also do not reflect any implicit abandonment.

According to the minutes, point 10

"[the opponent] was then [after a discussion of novelty] requested to begin his arguments with the grounds relating to Art. 100(a) EPC by identifying the most promising closest prior art document and using the feature analysis as appended to the summons".

In the following, objections based on E1 in combination with E10 as well as E3 in combination with E10 were discussed.

By discussing these objections, the opponent merely followed the chairman's conduct of the oral proceedings but did not implicitly abandon any or all further objections besides those discussed. The opposition division accepted a discussion of inventive step starting from documents E1 or E3 as starting point. Due to this fact, the opponent could not assume that the opposition division had implicitly dealt with the further objection based on E8 in combination with E6 by only accepting a single piece of prior art or only exclusively accepting E1 or E3 as the starting point for the assessment of inventive step.

According to point 28 of the minutes, the opponent declared that he had no "further objections to raise". However, objections presented in writing do not need to be repeated at the oral proceedings in order for the deciding body to have an obligation to taken them into account in the final decision, see for example decision R 5/19, reasons 3.6. Therefore, this statement also can not be considered an implicit abandonment.

4.7 There was thus at least no clear abandonment. Therefore, the opposition division could not legitimately assume that the objection in question was abandoned. Rather in case of doubt it would have been incumbent on them to clarify the procedural situation.

4.8 It follows that the decision under appeal does not contain reasons concerning the objection of lack of inventive step based on E8 as closest prior art in combination with document E6. Not presenting reasons in the decision under appeal concerning this objection adversely affected the opponent-appellant's right to a sufficiently reasoned decision.

5. Remittal

5.1 The board finds the appeal to be allowable due to the substantial procedural violation found in point 4 above. It remits the case to the opposition division pursuant to Article 111(1), second sentence, EPC in conjunction with Article 11 RPBA.

5.2 According to Article 11 RPBA, 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.

5.3 It is apparent from the preceding considerations that the proceedings before the opposition division are tainted by a substantial procedural violation, which, at least in this case, also constitutes a fundamental deficiency within the meaning of Article 11 RPBA. (CLBA, V.A.9.4.3)

6. Reimbursement of the appeal fee

6.1 The board deems the appeal to be allowable given the substantial procedural violation found above (in point 4). Pursuant to Rule 103(1)(a) EPC, the board deems reimbursement of the appeal fee equitable by reason of that violation.