T 0740/00 10-10-2001

1. Admissibility

1.1. According to Article 107 EPC any party to proceedings adversely affected by a decision may appeal. If the Appellant indeed withdrew its prior requests in the oral proceedings before the Opposition Division in favour of the request dealt with in the decision, as was stated by the Opposition Division in the decision under appeal, the Appellant would not have been adversely affected by the decision to maintain the patent in amended form according to that request, resulting in the appeal being inadmissible.

1.2. To establish what actually were the requests in the oral proceedings before the Opposition Division, the Board has taken recourse to the minutes of these proceedings.

According to Rule 76(1) EPC the minutes should contain the essentials of the oral proceedings and the relevant statements of the parties. This means, as is also indicated in the Guidelines for Examination E-III, 10.2, that new or amended procedural submissions or the withdrawal thereof, the fresh submission or amendment or withdrawal of application documents such as claims, description or drawings should be noted in the minutes. If a decision is given, the wording of the operative part must be reproduced in the minutes.

1.3. According to the text of the minutes (see point V above) the prior main and auxiliary requests were withdrawn in favour of a new main request for maintenance of the patent in amended form, of which claims 1 and 8, submitted during the oral proceedings, were annexed.

According to the cover page of the minutes a decision was pronounced at the end of the oral proceedings maintaining the patent in amended form with, among others, claims 1 and 8 as submitted during the oral proceedings (see point IV above).

However, that same cover page mentions the following: "Regarding the reasons for the decision the chairman referred to Article 102(1) EPC: one of the grounds of opposition mentioned in Article 100 EPC prejudices the maintenance of the patent as granted".

From this statement the Board can only conclude that the Patentee apparently maintained a request for rejection of the opposition, i.e. maintaining the patent in the form as granted, which was decided upon and rejected by the Opposition Division. The main request as argued by the Appellant and submitted with letter of 9 May 1996 comprised at least claim 1 as granted.

A request for maintenance of the patent as granted is a higher ranking request than one for maintenance of the patent in amended form.

1.4. It is consistent case law of the Boards of appeal that if a patent can only be maintained on the basis of an auxiliary request the decision has to contain a reasoned statement why the version of the higher ranking request does not meet the requirements of the EPC (see T 234/86, OJ 1989, 79).

The written decision does not contain any reasoning to that effect and therefore does not comply with Rule 68(2) EPC. The Appellant is adversely affected by such a decision because it is inconsistent with what he specifically requested (in this respect reference is made to the French text of Article 107(1) EPC which reflects this requirement most clearly: "Toute partie à la procédure ayant conduit à une décision peut recourir contre cette décision pour autant qu'elle n'ait pas fait droit à ses prétentions." (see J 12/85, OJ 1986 155).

The appeal, which further fulfils the formal and substantive requirements, is therefore admissible.

2. Procedural violation

2.1. According to the cover page of the minutes of the oral proceedings before the Opposition Division on 11 June 1999, at the end of the oral proceedings a decision was announced stating that the patent and the invention to which it related were found to meet the requirements of the EPC and that the currently valid claims were (see point IV above):

Claims 2 to 7, 9 to 12 received on 11 May 1996 with letter of 9 May 1996, and claims 1 and 8 filed during oral proceedings on 11 June 1999.

2.2. The written decision refers in its tenor to the following claims as forming the basis for the decision:

Claims 1 to 7 as received on 25 November 1999.

To claims 2 and 5 the Opposition Division had furthermore made amendments of its own accord.

2.3. It is clear from the above facts that there are substantial discrepancies between the decision announced at the oral proceedings and the written decision following the oral proceedings:

The written decision involves a patent maintained with only 7 claims, the decision pronounced at the oral proceedings involves a patent maintained with 12 claims.

The decision announced at the oral proceedings finds that the patent fulfils the requirements of the EPC with the documents then on file whereas the written decision is based upon subsequently filed patent documents, to which the Opposition Division has even made further amendments of its own motion.

2.4. Rule 68(1) EPC allows for decisions being given at oral proceedings and that subsequently the decision in writing shall be notified to the parties. The Rule unambiguously refers, in its two parts, to the same decision given orally prior to being notified in writing.

2.5. Decisions can only be corrected pursuant to Rule 89 EPC as far as linguistic errors, errors of transcription or obvious mistakes are involved.

Analogous to examination proceedings, wherein the decision to grant the patent refers to the documents approved by the applicant under Rule 51(4) EPC whereby they become an integral part of that decision (see T 850/95, OJ 1997, 152), the present Board finds that in opposition proceedings the documents referred to in the decision to maintain the patent in amended form also form an integral part of that decision.

Thus, in principle, errors in these documents may also be corrected under Rule 89 EPC, if the text was not and obviously could not be the text corresponding to the real intention of the Opposition Division. That would namely amount to an obvious mistake. However, the differences between the decision pronounced at the oral proceedings and the written decision do not relate to such mistakes.

This is already clear from a comparison of the two sets of claims.

The first set of claims, mentioned in the minutes, comprises:

- an independent apparatus claim 1 with dependent claims 2 to 7,

- an independent method claim 8 with dependent claims 9 to 12.

The second set of claims, mentioned in the written decision, comprises:

- an independent apparatus claim 1 with dependent claims 2 to 4,

- an independent method claim 5 with dependent claims 6 and 7.

Apart from unexplainable differences in the wording of the individual claims of the two sets, the different number and arrangement of the claims in the second set in particular cannot be considered as a correction of an obvious mistake made in the claims of the first set.

2.6. In the Board's judgement, such discrepancies between the documents forming an integral part of the decision notified in writing from those of the decision taken at the oral proceedings and given orally, according to the minutes, amounts to a substantial procedural violation on its own requiring immediate remittal of the case to the first instance, for taking a new decision with proper identification of the documents on which the decision is based.

2.7. Although the above-mentioned procedural violation is sufficient to set aside the decision under appeal, for remittal to the first instance pursuant to Article 111(1) EPC and for reimbursement of the appeal fee in accordance with Rule 67 EPC, the Board considers it necessary to point out further procedural irregularities in the present case.

3. Ambiguity in the procedure followed

3.1. According to the text of the minutes of the oral proceedings before the Opposition Division the chairman declared that the subject-matter of claims 1 and 8 of the main request as amended fulfilled the requirements of the EPC and that amended patent documents taking account thereof and acknowledging certain prior art as well as a fair copy of the claims should be filed (see point V above).

3.2. The above would mean that the Opposition Division, in the oral proceedings, expressed its intention to maintain the patent in amended form on the basis of claims 1 and 8 as amended, as soon as an amended description had been filed.

That is in fact the procedure recommended in the Guidelines for Examination D-VI, 7.2.1 and 7.2.2 when a complete text approved by the patentee is not available in the oral proceedings. In such a case the patentee is set a time limit for filing amended documents, the minutes functioning as a communication pursuant to Article 101(2) EPC. Only after the opponent has been given the opportunity to comment on the proposed new text can the Opposition Division issue its interlocutory decision.

However, the cover sheet of the minutes mentions that the oral proceedings ended with the decision to maintain the patent with the documents then on file.

3.3. The minutes containing these contradictory statements were sent to the parties on 20 October 1999, more than four months after the oral proceedings and more than one month after receiving the Appellant's letter of 14. September 1999 enquiring whether he would receive an appealable interlocutory decision first or whether he would receive a formal invitation with a time limit to submit amended documents.

Apart from the fact that a period of four months can hardly be considered being in agreement with the statement in the Guidelines for Examination E-III, 10.2 ("The minutes .... are communicated to the parties as soon as possible"), the Appellant was left completely in the dark as to what was actually expected of him:

should he submit amended documents as the text of the minutes and the annexed form 2042 ("you are invited to file your observations and to correct the deficiencies indicated within a period of 1 month") implied, or did he not need to because the cover sheet of the minutes indicated that the patent was maintained anyway with documents it had previously filed in the opposition proceedings and had thus agreed to?

3.4. If the Opposition Division sends a communication pursuant to Article 101(2) EPC to the parties inviting them to file observations, it sets a time limit. According to Rule 84 EPC such a time limit shall not be less than two months nor more than four months. Setting a time limit of one month does not comply with this requirement.

3.5. The Board considers that due to the Opposition Division's actions the situation of the file was unclear to the Appellant in relation to the procedure followed and in respect of what was expected of him.

4. The appellant's requests

4.1. As already discussed in points 1 and 2 above, there is a contradiction within the minutes as well as between the minutes and the written decision as regards the requests of the Appellant and the documents forming the basis for these requests.

4.2. It is the procedural obligation of the Opposition Division to establish the requests of the parties, the order in which these are to be dealt with, and deal with these requests in the established order. A subsequent request can only be considered as having been agreed to by the patent proprietor when the preceding request has been dismissed. Only thus can the requirements of Article 113(2) EPC be observed (see T 666/90 and T 552/97, both not foreseen for publication in the Official Journal).

From the above it is clear that the Opposition Division did not clearly establish what were the requests of the patentee and in which order they were to be dealt with, before it took its decision.

4.3. This is furthermore evident from the file: the (partly) handwritten claims 1 and 8 apparently forming the basis for the decision announced at the oral proceedings are not signed by the patentee's representative, contrary to Rule 36(3) EPC. There is no indication in the file that the Opposition Division invited the representative in the oral proceedings to remedy this deficiency.

4.4. Claim 1 further bears the heading "auxiliary request" as well as "main request", the latter, however, having been added in handwriting. The identity of the person making the handwritten amendments to the text of the claims cannot be established as no signature or initials of that person are present, nor whether the patentee's representative agreed thereto. The claims are marked "filed during oral proceedings 11.05.99", however the oral proceedings were set for and took place on 11 June 1999.

4.5. If these amendments were made by a member of the Opposition Division during the oral proceedings, it should have been clear from the file that the patentee agreed thereto. If these amendments were made after the oral proceedings, they reflect the intention of the Opposition Division to maintain the patent in that form. However, in that case the notification of this text has to fulfil the requirements of Rule 58(4) EPC in that the time limit to submit observations is two months and not one month as mentioned on form 2042 accompanying the minutes and the text of claims 1 and 8.

4.6. Therefore it has to be concluded that the Opposition Division committed a further substantial procedural violation in not properly establishing the requests of the parties before announcing the decision at the oral proceedings.

5. Correction of minutes of the oral proceedings before the Opposition Division

5.1. The Board wishes to remark on the procedure followed by the Opposition Division regarding the minutes of the oral proceedings before it.

In its letter of 23 November 1999 the Appellant informed the Opposition Division of its opinion that the minutes sent on 20 October 1999 did not reflect the actual conduct of the proceedings. However, the Appellant did not explicitly request a correction of the minutes, instead it relied on the decision to reflect the situation as it thought it had occurred.

5.2. The Opposition Division apparently did not consider this letter to constitute a request for correction of the minutes, as there is no trace of any reaction thereto on its part. The decision itself, which followed six months later, did not address the issue of correction either (see point 5.4 below).

5.3. As already discussed above, the inconsistencies in the minutes are evident. Had the Opposition Division in the present case reacted promptly, i.e. at a point in time at which the memory of the members of the Opposition Division of the course of the oral proceedings before it was still fresh, they could not have missed them and could have reacted thereupon. Thus it would have provided not only a reliable basis for the Board's decision as to what actually happened or did not happen in the oral proceedings, but also it would have had the opportunity to correct the minutes in case in actual fact no decision but only an intention to maintain the patent in amended form had been announced in the oral proceedings, the latter following the procedure as suggested in the Guidelines for Examination D-VI, 7.2.1 and 7.2.2 referred to above (see point 3.2).

5.4. Instead of examining whether the minutes actually fulfilled the requirements of Rule 76(1) EPC and then deciding whether or not to correct them, the Opposition Division (point 7 of the decision under appeal) argued in essence that the minutes were correct because the minutes say so ("...., this cannot be accepted because the protocoll states clearly that all these former request have been dropped during Oral Proceedings and have been replaced by a single main request comprising the current claims as cited above").

The Board considers such a reasoning circular and thus as not fulfilling the requirements of Rule 68(2) EPC, which requires decisions of the European Patent Office to be reasoned. This constitutes another procedural violation.

6. Further procedure

Having regard to the facts of the case, the Board is of the opinion that the number and severity of the procedural violations and irregularities on the part of the Opposition Division lead to serious doubt as to whether the Appellant's rights can be guaranteed when the present case is dealt with by the Opposition Division in its present composition. However, in the present case the Board considers it appropriate to leave it to the Appellant to decide whether it shares this doubt to a degree necessitating a request for a change in the composition of the Opposition Division.