Thursday, 15 February 2018

R 4/17 - Four is a party



In the present case, the Opponent appealed the decision of the Opposition Division to maintain the patent as granted. The Board of Appeal sent three registered - but without advice of delivery - communications (notice of appeal; statement of the grounds of appeal; further letter) to the Respondent-Proprietor. In the absence of any response from the Proprietor to these letters, the Board of Appeal considered itself to be in a position to issue a decision revoking the patent without the need to hold oral proceedings. This decision of the Board was sent to the parties under cover of a registered letter with advice of delivery. 

The Proprietor filed a petition for review of the decision, arguing that it had no record of ever having received the first three letters, thus depriving him of his right to be heard.

The Enlarged Board now deals with this petition for review, and finds that in the present case, the Proprietor had, within the meaning of Article 113(1) EPC, no opportunity at all to comment on the grounds for the decision under review. This qualifies as a fundamental violation of his right to be heard.


Catchwords:
In the event of any dispute about whether a letter from the EPO reached the addressee or on which date, it is incumbent on the EPO to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee (Reasons, point 2).

[...] parties must be able to rely on the EPO complying with the relevant provisions of the EPC and, at least for the purposes of Article 113(1) EPC, they and their representatives have no duty to monitor the proceedings themselves by regularly inspecting the electronic file (Reasons, point 4).

In respect of the implausibility of the non-arrival of letters put forward by the Other Party the Enlarged Board considers that it cannot be expected that the Petitioner should prove a negative, that is the nonreceipt of a letter, or provide a plausible explanation for non-receipt (Reasons, point 4). 


Reasons for the decision

Formal requirements for admissibility

1. The Petition fulfils the formal requirements for admissibility (time limits, form, Rules 106, 107 EPC, and payment of fees). Hence, the petition is admissible.

Allowability of the petition

2. Rule 126(2) EPC provides that in the event of any dispute about whether a letter from the EPO reached the addressee or on which date, it is incumbent on the EPO to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee, as the case may be. In the present case the Office was not able to establish by internal investigations that the critical communications reached their destination, as required by the applicable cited Rule.

3. In the absence of any relevant evidence from outside the EPO, the Opponent-Appellant’s notice of appeal, statement setting out the grounds of appeal and its letter must be considered not to have been communicated to the Petitioner. Such communication is required by Rule 100(1) in conjunction with Rule 79(1) EPC.

4. Although the notice of appeal, statement setting out the grounds of appeal and letter were available to the public by way of electronic file inspection, parties must be able to rely on the EPO complying with the relevant provisions of the EPC and, at least for the purposes of Article 113(1) EPC, they and their representatives have no duty to monitor the proceedings themselves by regularly inspecting the electronic file. There is also no evidence that the Petitioner learnt of these documents by other means.

In respect of the implausibility of the non-arrival of letters put forward by the Other Party the Enlarged Board considers that it cannot be expected that the Petitioner should prove a negative, that is the non-receipt of a letter, or provide a plausible explanation for non-receipt (negativa non sunt probanda). The Other Party also suggested that an internal reorganisation of the Petitioner could have been the cause of the non-receipt of the documents. The Enlarged Board notes that the decision under review was sent to “Rhodia Chimie, Direction de la Propriété Industrielle”, that is to the same addressee, and at the same address, as all the communications issued by the Board of Appeal between 25 October 2011 and 12 April 2017. The EPO’s file shows that between 25 October 2011 and 11 April 2012, and on 18 April 2017 the Petitioner received the EPO's communications. It is only in the period 11 June 2012 to 23 August 2012 that mail was apparently not received by the Petitioner. Thus the same entity at the same address has received communications both before and after the period of apparent non-receipt. The Petitioner has not submitted any comment on this argument. From the evidence before the Enlarged Board it does not appear that during the relevant time a reorganisation of the Petitioner took place. However, this argument is of no bearing as long as the EPO is not in a position to establish that the letters reached their destination. The issue would have been different if, as a matter of evidence, the letters were known to have reached their destination in the sense of Rule 126(2) EPC, but were not processed by the addressee due to an internal reorganisation, i.e. under circumstances within the control of the addressee.

5. It follows that in the appeal proceedings under consideration the Petitioner had, within the meaning of Article 113(1) EPC, no opportunity at all to comment on the grounds for the decision under review. This qualifies as a fundamental violation of Article 113(1) EPC pursuant to Article 112a(2)(c) EPC, so that the petition and the request for reimbursement of the fee for the petition (Rule 110 EPC) have to be allowed (see R 7/09, points 4 to 6 of the Reasons).

Order

For these reasons it is decided that:

1. The decision under review is set aside and the proceedings before Board of Appeal 3.3.03 are re-opened.

2. Reimbursement of the petition for review fee is ordered.

This decision R 0004/17 (pdf) has European Case Law Identifier: 
ECLI:EP:BA:2018:R000417.20180129. The file wrapper can be found hereImage "Mail Box" courtesy of digitalart at FreeDigitalPhotos.net (no changes made).


T 447/13 - Trivially or seriously ill?

Better send in a doctor's certificate?

In the present case, the professional representative became ill before the scheduled OP, and excused him/herself by a phone call and subsequent letter indicating that he/she had "take[n] ill" while requesting the OP to be rescheduled. The request was refused by the ED for the reasons that the representative referred in his letter only to illness and not to serious illness, and that the request was not accompanied by a substantiated written statement indicating the reasons.

The Board now deals with this matter in appeal, and finds that the ED did not properly exercise its discretion but rather took an unreasonable approach based on a wrong principle.

Catchwords:
For the purposes of deciding whether to grant a request for postponement of oral proceedings on grounds of illness, the reference to "serious illness" in the Guidelines means an illness which is sufficiently serious to prevent the representative travelling to oral proceedings and presenting the case on the appointed day (Reasons, point 5.3).

Where a request for postponement of oral proceedings is refused on the ground that the request was not sufficiently substantiated, it is incumbent upon the Examining Division to explain why it considers the substantiation insufficient. In other words, it should state in clear terms what, in its opinion, should have been submitted or explained, but was not (Reasons, point 6.4).


Friday, 2 February 2018

R 8/16 - A plurality of petition grounds

A petition for review with many grounds...

In opposition proceedings, the patent was upheld with amended claims. During appeal by the proprietor and an opponent, the Board revoked the patent for added subject-matter.

The proprietor-appellant filed a petition for review under Article 112a EPC against the decision of the Board. The petition lists various grounds, as enumerated below.

The EBA discusses the admissability and allowability of these grounds, including whether a counter-argument put forward during oral proceedings also represents a formal objection under Rule 106 EPC (admissibility of ground D), whether the right to be heard is violated if an admission of a request is not reasoned (allowability of ground C), whether the BoA is free to determine the order in which the requests are discussed (allowability of ground C), and why it is needed for the petition to already contain the specific arguments w.r.t. a fundamental violation of Article 113 EPC (rather than those being specified in a later response or during oral proceedings) (allowability of ground D)

Catchwords:
1. Only parties adversely affected by a decision may resort to a procedure under Article 112a EPC. The term 'fundamental violation' in Article 112a(2)(c) EPC also must be read in this light. An alleged violation cannot be fundamental, in the sense of 'intolerable', if it does not cause an adverse effect. (Reasons, point 23).

2. The principle of party disposition expressed in Article 113(2) EPC does not extend so as to permit a party to dictate how and in which order a deciding body of the EPO may examine the subject-matter before it. The only obligation on the EPO is not to overlook any still pending request in the final decision. A Board has no particular duty to give reasons why it chose to proceed as it did (Reasons, point 25).

3. A Board has no obligation to peruse the whole file of the first instance proceedings. It is the duty of the parties to raise issues again in the appeal proceedings, to the extent necessary, as stipulated by Articles 12(1) and (2) RPBA: "Appeal proceedings shall be based on [the submissions of the parties filed in the appeal proceedings, which] ... should specify expressly all the facts, arguments and evidence relied on" (Reasons, point 38).

The petition grounds:
XI. Right to be heard violations, Art. 112a(2)(c) and 113 EPC

A. The written decision of the Board contained no reasons why the claims as upheld by the Opposition Division were not allowable, thus not permitting the petitioner to understand why the decision under appeal was reversed.

B. The Board's decision did not explain what happened to the earlier withdrawn requests, but only referred to the petitioner's final requests that it confirmed at the end of the oral proceedings.

C. The decision contained no reasons why the main request was admitted, and why this decision was only made after the decision not to admit the later withdrawn auxiliary requests. This lack of reasons in the decision violated the petitioner's right to be heard, because arguments need not only be heard, but also must be acknowledged in a decision of the EPO.

D. The Board did not consider the main arguments of the petitioner, why the "only two bearing" feature does not add subject-matter. (...). The petitioner also submitted that the arguments not mentioned could well have changed the outcome of the decision.

XII. Fundamental procedural defect, Art. 112a(2)(d) EPC

E. The Board did not decide on a request pursuant to Rule 104(b) EPC, in that the main request was discussed and decided on only after a discussion and decision on the claims as upheld. In this respect, the petitioner raised an objection under Rule 106 EPC.

XIV. Further procedural violations

F. The petitioner was led into the inescapable trap of Article 123(2)/(3) EPC by the Examining Division, i.e. the European Patent Organisation itself provoked the error.

G. The petitioner lost its patent on a 'formalistic issue', against the spirit of Article 4(3) EPC, and after having spent considerable sums.

H. The considerations underlying petition grounds F and G were not taken into account by the Board, when revoking the patent, in full knowledge of pending parallel infringement actions.

Tuesday, 30 January 2018

T 2101/14 – Not admissible if not promptly substantiated


The applicant filed an appeal against a decision of the Examining Division refusing applicant’s European patent application. With the statements of the grounds of appeal, the applicant forwarded a new set of claims not previously presented during examination. In a preliminary assessment of the claims, the Board expressed its concerns about the introduction of a new unsearched feature.

In order to obviate the Board’s concerns, the applicant presented a further set of new claims. Since this further set of new claims was based on a suggestion for an allowable claim of the Examining Division, the applicant did not consider necessary to file substantiating arguments in support of this new request. Only during oral proceedings the applicant substantiated the patentability of the further set of new claims.

For the Board, an unsubstantiated request becomes effective at the date on which the request is substantiated (T 1732/10) and thus too late in the present case because it would have inevitably required an adjournment of the oral proceedings, which is excluded by Article 13(3) RPBA. Thereby the Board refused to admit the further set of new claims into the proceedings even if the claims were filed well before arrangement of the oral proceedings and dismissed the appeal.


Wednesday, 24 January 2018

T 282/12 - Partial priority and "the first application": partial first application

May a priority application and an even earlier application filed by the same applicant partially relate to the same invention, just as the priority application and a patent claiming priority therefrom may partially relate to the same invention (whereby the latter may benefit from partial priority under G 1/15)? If so, the priority application would be the first application in respect of only that part of the invention which is not the same as in the earlier application and priority would only be valid for that part, but not over the full scope of the claim. This was the key point in this decision.

Tuesday, 16 January 2018

T 2450/16 - Relying on guidance from epoline

Screenshot of epoline at its introduction in 2000

This case concerns the request of re-establishment of rights under Article 122 EPC in respect of the period for filing the notice of appeal against the decision of the Examining Division to refuse a European patent application.

The applicant's instructions to file an appeal were transmitted to the administrative assistant in charge of the present file. The assistant was, however, confronted with completing this task in epoline, which according to the applicant/appellant contained no clear indications concerning the initiation of an appeal procedure, apart from the payment of the appeal fee.

The assistant thus did not find any guidance for filing an appeal other than payment of the appeal fee. In paying the appeal fee, the assistent went ahead firmly but wrongly believing from epoline that this was all that was necessary. She therefore wrongly found it superfluous to consult another administrative assistant or an attorney/engineer. According to the applicant/appellant, this constituted the isolated mistake that had occurred in the present case.

As one may expect, the Board however finds that it would have been the responsibility of the representative in the circumstances to give specific and clear instructions on the filing of an appeal to the assistant.

Wednesday, 10 January 2018

T 796/12 - Appeal of opponent which is no longer registered as company

They may not really exist...., but they are coming for you
Is the appeal of an opponent valid, if the company that filed the appeal is no longer registered as a company? 
The patent proprietor argues that the appeal is inadmissable either because the opponent was no longer registered at the date the appeal was filed, or because the opponent was subsequently taken over by a different entity without this change having been notified.
The Board refers to national law, and concludes that German law does not preclude a company which is no longer registered from appealing an opposition decision, even as  opponent. 

Statcounter