Friday, October 05, 2018 T 0861/16 - "Qui tacet consentire videtur" does not apply to the EPC

In this decision the proprietor files an appeal against the decision of the opposition division to maintain his patent in amended form. 

The opposition division had mentioned to the parties during oral proceedings that the text of the patent required amendments. However, since the content of these amendments does not appear either in the decision of the opposition division or in the minutes of the oral proceedings, the proprietor could not in any way recognize the modifications made to the text of the patent and give his consent.

Nowhere in the decision of the opposition decision or minutes of the oral proceedings it is stated that the proprietor consented to the amended text nor did the opposition division ensure that the proprietor agreed with the amended text, thereby the BoA concluded that the opposition division incurred into a substantial procedural violation of Art. 113(2), EPC.

The mere fact that the proprietor responded negatively to the invitation of the opposition division to comment on the amendments does not imply that the proprietor agreed with the amendments. The principle of "qui tacet consentire videtur", i.e., who is silent seems also to agree, is not an established principle of the EPC.

Tuesday, February 27, 2018 T 1567/17 – an unclear waiver is no waiver

In this case, the examining division issued a direct refusal after the appellant had rejected the text intended for grant and requested that examination be resumed based on reasoned amendments. The new main claim incorporated an amended feature which, according to appellant’s own statement, “could be omitted if regarded as violating Art. 123(2)”. The examining division indeed regarded the amended feature as a violation, and interpreted the appellant’s statement as an acknowledgement that the amendment could not be unambiguously derived from the description as filed. The appellant was given no opportunity to respond to the division’s opinion on this issue.

The Board held that the direct refusal of the application was in violation of Art. 113(1) EPC, since the appellant’s statement could not be construed as waiving the right to be heard, but merely intimated that a new R. 71(3) communication would have been accepted on the basis of amended claims without the feature in question.

Only an unambiguous statement as to waiving a party's right to be heard is to be interpreted as a waiver of this right.

Catchwords:

The applicant's remark in a response under Rule 71(6) EPC that an amended feature "can also be omitted if regarded as violating Article 123(2) EPC" cannot be construed as waiving its right to be heard and its right to a reasoned decision in case the application were to be refused. Rather, this remark merely intimates that the applicant would accept the issue of a new communication under Rule 71(3) EPC on the basis of the amended set of claims without said feature.