BOARD OF APPEAL AND ENLARGED BOARD OF APPEAL CASE LAW 2018 AND 2019
III. RULES COMMON TO ALL PROCEEDINGS BEFORE THE EPO
A. The principle of the protection of legitimate expectations
1. Knowledge of the relevant legal provisions and the case law
(CLB, III.A.1.2.1)
In T 590/18 of 4 July 2018 the board held that a debit order filed on paper (EPO Form 1010) after 1 December 2017 could at most be accepted as a valid payment of the appeal fee if the appellant could successfully claim to have seen still current information clearly indicating the option of paying this way on the EPO website after the entry into force of the change to fee payment methods, to have been entitled to entertain a legitimate expectation as to that information's accuracy, and indeed to have acted in reliance on it. Finding a PDF version of a brochure published before the change's entry into force was not sufficient to establish such a legitimate expectation, especially when the appellant had anyway known about the change.
2. Obligation to draw attention to easily remediable deficiencies
(CLB, III.A.3.)
In T 703/19 the board considered that EPO users could legitimately expect a plausibility check to be carried out on the filing of an appeal. On filing its notice of appeal, the appellant had stated in it that the appeal fee had thereby been paid via the Online Fee Payment service. The letter accompanying subsequently filed items, however, contained information on the kind of fees and the amount payable but nothing on the method of payment, for which "not specified" appeared. The bank account number was missing too. The board considered that this lack of information was clearly at odds with the stated intention of paying the appeal fee on filing notice of appeal. The deficiency had at any rate been readily identifiable as both the accompanying letter and the notice of appeal had contained very little information.
The board also held that, although it was the appellant's own responsibility actually to pay the appeal fee, the same did not necessarily go for all related aspects of the process. Were that so, the Enlarged Board would not have concluded in G 2/97 (OJ EPO 1999, 123) that, in the hypothetical example given there, the board ought to have drawn the appellant's attention to a missing cheque. In the board's view, the point of that example had instead been to illustrate a situation where a clearly identifiable intention to perform a procedural act on filing notice of appeal (payment of the appeal fee) was at odds with what had actually been done and this discrepancy was readily identifiable. Both these conditions were met in the case in hand.
It had thus been legitimate for the appellant to expect that it would have been alerted to the missing information under the heading "Method of payment", which, since it had filed notice of appeal more than a month before the end of the period available, would have enabled it to pay the appeal fee in time. The board regarded the fee as having been paid in time and deemed the appeal to have been filed.
B. Right to be heard
1. Decision must demonstrably show that arguments were heard and considered
(CLB, III.B.2.4.2)
In T 655/13 the board held that the examining division would need to provide the translation of at least the referenced larger section of document D1 on which it based its reasoning, or identify the relevant passage as clearly as possible, to enable the appellants (and if necessary the board) to understand and verify whether the examining division had taken their arguments into account, thereby respecting their right to be heard.
2. No obligation to address each and every argument
(CLB, III.B.2.4.3)
In T 448/16 the appellant (patent proprietor) raised an objection under R. 106 EPC, the core of which was that the board should have indicated to the appellant what features were missing in the various versions of the auxiliary requests. This would have allowed the appellant either to provide suitable arguments in favour of existing requests or formulate a new request that could have overcome the problem of added subject-matter. The board applied the established jurisprudence of the Enlarged Board of Appeal. It found that had it, after having discussed the issue exhaustively with the parties, then indicated to the appellant precisely which specific features were missing from claim 1 in any of its versions so that the appellant-proprietor could compose suitable counter-arguments or file a suitably adapted further request, this would have favoured the appellant's case over that of the respondents (opponents). The board stated that such a course of action would have compromised its duty to remain neutral, and thus the board saw itself as prohibited from so doing. The board thus dismissed the appellant's objection and considered that its right to be heard had not been violated.
3. The requirement of a text agreed by the applicant
(CLB, III.B.3.3.)
In T 1227/14 the appellant I (patent proprietor) submitted that, contrary to what was indicated in the minutes of the oral proceedings, it had not delegated the adaptation of the description to the opposition division. It had instead requested a return to written proceedings for the adaptation of the description, but that had been omitted from the minutes. In spite of this, it had not requested the correction of that omission by the opposition division. The opposition division, however, had issued the impugned interlocutory decision on the text in which the opposed patent could be maintained without first submitting that text – containing the division's adapted description – to the patent proprietor. It had thus violated the principle of the right to be heard laid down in Art. 113(2) EPC. Even and especially where adaptation of the description is delegated to an EPO department, there is no scope for releasing it from this obligation.
The board in T 861/16 noted that there was no mention anywhere, in either the minutes or the decision, that the patent proprietor had approved the amended text. Nor had the respondent (opponent) offered any evidence that the patent proprietor had explicitly approved a text submitted before the opposition division's decision. The board held that since the principle of tacit acceptance (qui tacet consentire videtur) was not established in the EPC, it was not enough to ask the patent proprietor if it wished to comment on the amendments to the description carried out by the opposition division. The opposition division had to ensure that the patent proprietor had given its agreement. The board held that in the absence of the patent proprietor's approval of the version as maintained, the proceedings before the opposition division were vitiated by a substantial procedural violation (Art. 113(2) EPC).
C. Oral proceedings
1. Right to oral proceedings in examination, opposition and appeal proceedings
(CLB, III.C.2.1.)
In G 2/19 the Enlarged Board of Appeal decided that the first referred question was inadmissible and, as a result, reworded the second and third referred questions as follows:
2. Is the right to oral proceedings under Art. 116 EPC before a board of appeal limited where a third party within the meaning of Art. 115 EPC files an "appeal" against the grant of a patent, relying on the argument that there is no alternative legal remedy under the EPC against the examining division's decision to disregard its observations concerning an alleged infringement of Art. 84 EPC?
3. Can a board of appeal hold oral proceedings in Haar without infringing Art. 113(1) and 116(1) EPC if it has been requested that they be held in Munich instead?
As regards question 2, the Enlarged Board observed that Art. 116(1), first sentence, EPC provided very generally that oral proceedings were to take place if so requested by any party to the proceedings. The referring board had assumed that a third party's filing of an appeal had made it a party to the appeal proceedings and that it was therefore entitled to require that oral proceedings be held (T 831/17).
The Enlarged Board considered this view too simplistic in that it took this involvement in appeal proceedings as the sole basis for establishing the required party status. On a reasonable interpretation, however, Art. 116(1), first sentence, EPC did not dictate such an automatic procedural outcome but rather allowed for exceptions. Given the variety in the scope of that provision's application, its nature could not be considered so, as it were, absolute. The legislator had clearly intended it to serve as a basic rule governing the typical cases facing EPO departments in their everyday practice but it could not be ruled out that exceptions to this basic rule might be made where its application would make no sense in the specific circumstances of an individual case. Instead, Art. 116(1), first sentence, EPC was to be interpreted narrowly, such that a purely formal position as de facto party to appeal proceedings was not enough to confer a right to require that oral proceedings be held if the person requesting them had no standing to appeal, because they had not been a party to the foregoing proceedings in the legal sense, or if the grievance they invoked was not appealable.
As regards question 3, the Enlarged Board observed that the fact that the boards currently performed their judicial function in Haar was the result of organisational acts adopted and implemented by the mandated organs of the European Patent Organisation in exercise of their powers. As to the objection that the boards' move to Haar had been contrary to the EPC's provisions and so to a certain extent unlawful, it found that this did not per se fall within the boards' jurisdiction. Their duty under the EPC was to contribute to performance of the EPO's task of granting patents (Art. 4(3) EPC) by exercising judicial powers (Art. 23 EPC). That did not include, at least not directly, reviewing an organisational matter such as whether choosing to locate the boards in Haar was in keeping with the objective institutional provisions of the EPC. At best, such a matter could be reviewed in appeal proceedings under Art. 106 et seq. EPC in the context of whether the boards' move to Haar was liable to impair the protected or protectable subjective standing of a party to proceedings to exercise its rights before them. That was not in issue here, however.
The Enlarged Board held:
1. A third party within the meaning of Art. 115 EPC who has filed an appeal against a decision to grant a European patent has no right to have its request for an order that examination proceedings in respect of the European patent be reopened for the purpose of removing allegedly unclear claims (Art. 84 EPC) heard at oral proceedings before an EPO board of appeal.
An appeal filed in such a way has no suspensive effect.
2. Oral proceedings before the boards of appeal at their site in Haar do not infringe Art. 113(1) and 116(1) EPC.
2. Preparation of oral proceedings – fixing or changing the date for oral proceedings
(CLB, III.C.6.1.)
In case T 447/13 the examining division had refused a request for postponement of oral proceedings. The board concluded that where a request for postponement of oral proceedings is refused on the ground that the request was not sufficiently substantiated, the decision of the examining division should state in clear terms what should have been submitted or explained. Furthermore, the board held that, for the purposes of deciding whether to grant a request for postponement of oral proceedings on grounds of illness, "serious illness" means an illness which is sufficiently serious to prevent the representative travelling to oral proceedings and satisfactorily presenting the case on the appointed day.
D. Time limits, date of receipt, further processing and interruption of proceedings
1. Date of receipt of documents transmitted by fax
(CLB, III.D.)
In T 858/18 the board held that if a facsimile transmission of a document within the meaning of R. 50(3) EPC begins on an earlier date and extends beyond midnight to a later date, the entire document is accorded the later date as the single date of receipt. The board considered the Decision of the President of the EPO dated 12 July 2007 concerning the filing of patent applications and other documents by facsimile (OJ SE 3/2007, 7). It provided no legal basis for according the earlier date as the date of receipt for the part of the document arriving at the EPO before midnight. The term "document" referred to the record of a complete unit of information. If part of a document were to be regarded as a document in its own right, it could not be relied upon as a correct reproduction of the information that the author intended to record. Consequently, incomplete sub-parts of a document could not be considered as a document in their own right. The board pointed out that in T 2061/12 and T 2317/13 an alternative approach had been adopted which foresaw according the earlier date of receipt to the part of a document according to R. 50(3) EPC reaching the EPO before midnight. The board in T 858/18 did not agree with this approach.
In T 2307/15 the board pointed out that although some paragraphs were missing in the statement setting out the grounds of appeal filed by the appellant on 15 February 2016, when compared with the version filed on 16 February 2016, the former still allowed the reader to understand the reasons for which the appellant requested that the impugned decision be set aside and the facts and evidence on which the appeal was based. The board held that the statement setting out the grounds of appeal received by fax on 15 February 2016 was therefore to be seen as being complete, since it fulfilled the purpose which it was meant to achieve. Hence, the board confirmed the approach taken in T 2061/12 and T 2317/13. The dissenting decision in T 858/18 remained an isolated decision in an individual case based on a factual basis different from the case in hand.
2. Interruption of proceedings because of insolvency (Rule 142(1)(b) EPC)
(CLB, III.D.3.6.)
In T 54/17 the board was called on to decide on an interruption of the proceedings.
The appellant (patent proprietor) had appealed against the opposition division's revocation of the patent. That decision had come after a first set of appeal proceedings, at the end of which the board had remitted the case for further prosecution. The proprietors at that time were the joint applicants Mr S. (common representative) and Mr P.
On the day before the scheduled oral proceedings, Mr P. requested that the proceedings be interrupted because insolvency proceedings initiated against Mr S. and his property in 2015 were still pending. The oral proceedings were cancelled as a result. By letter of 22 December 2017, the Legal Division interrupted the proceedings with effect from 30 January 2015 and, by letter of 5 March 2018, resumed them with effect from 2 May 2018.
The board observed that the reason for the interruption in this case had come to an end on 25 March 2015. However, in proceedings under the EPC, an end to the reason for their interruption did not automatically result in their resumption; instead, under R. 142(2) EPC, the proceedings were resumed only as from a date specified by the EPO after being informed of who was now authorised to continue them. The EPO had only been informed of the authorisation to continue the proceedings in a letter from the insolvency practitioner of 30 January 2018; the Legal Division had then specified 2 May 2018 as the date on which the proceedings were to resume. That would mean that both the first set of appeal proceedings, which had been closed by decision of 2 October 2015, and the opposition proceedings ensuing after remittal had been devoid of purpose and had to be conducted again.
The board took the view that, in cases where an appeal was pending, the Legal Division did not have exclusive competence to decide on an interruption. It thereby endorsed the view taken in T 854/12 that a board could decide on this for itself in any proceedings before it because, otherwise, a department outside the boards of appeal could deprive it of its power over those proceedings without its being able to do anything about it, especially if interrupting them retrospectively.
The board also found that the proprietor could no longer invoke the interruption and that the proceedings therefore had to be continued without any restriction. The purpose of R. 142(1) EPC was to protect proprietors against adverse procedural developments during their temporary procedural incapacity (T 854/12). However, such protection had at best been needed from 30 January 2015 to 25 March 2015. If a patent proprietor, despite being aware of circumstances justifying an interruption which wereexclusively within their sphere of influence, continued to act in proceedings for years after those circumstances had come to an end without ever invoking them, it would be unfair for them then to invoke an interruption at such a late stage, with the result that the proceedings conducted up to then, in which they had actively taken part, had to be conducted again. That would be at odds with the principle of good faith (see also, on sufficiency of disclosure, Chapter II.C.1.1.).
In T 1389/18 the board came to the conclusion that the appealed interlocutory decision of the opposition division had to be retroactively deemed not to exist. The appeals before the board were therefore also devoid of purpose, such that the appeal proceedings had to be ended without a decision on the merits of the case.
At the time of the Legal Division's communication declaring the proceedings interrupted, the opposition proceedings before the opposition division had not been formally concluded, but were still pending. Accordingly, the Legal Division was competent on the matter of an interruption under R. 142 EPC.
The board held too that an interruption under R. 142(1)(b) EPC serves the protection not only of the interests of the patent proprietor but also those of its creditors. This rule protects these interests by preventing any measure with legal effect from being taken, be it by the proprietor or the EPO, that is liable to adversely affect the patent's value as an asset.
Lastly the board had to decide whether it was required to take into account in the appeal proceedings an interruption under R. 142 EPC declared by the Legal Division during them. The board in T 854/12 had held that not to be the case. However the board in T 1389/18 doubted whether the reasons given in T 854/12 applied to the case in hand. In the circumstances it decided not to disregard the Legal Division's declaration of an interruption. Instead it reissued its earlier communication to avoid confronting the parties with an unclear procedural situation and disproportionately delaying the proceedings.
E. Re-establishment of rights
1. Date the error ought to have been noticed is decisive
(CLB, III.E.4.1.1 a)(i))
In T 198/16 the board stated that the current practice of applying the due-care requirement in the context of removal of the cause of non-compliance with a period within the meaning of R. 136(1) EPC could well be seen as extending the meaning of the due-care requirement in a way that enlarges the scope of the essentially substantive criterion by adding to it the function of an extraordinary preliminary admissibility/applicability hurdle. The board stated that this approach to the "removal" criterion, which could not be based on the letter of the law, was therefore doubtful. The board left open the question as to the approach to be followed.
F. Languages
1. Derogations from the language of the proceedings in oral proceedings
(CLB, III.F.3.)
In T 1895/13 the appellant complained that the oral proceedings at first instance had been held without interpreters although the representative had requested simultaneous translation. The examining division had seen no good reason to depart from the language of the proceedings (English), but had offered to clarify its comments in German where necessary while declining to act officially as interpreters. According to the appellant, R. 4(1) EPC unambiguously allowed a party to both speak and hear an official language chosen by the party and announced in good time. The examining division had no discretion to refuse interpretation in such a situation. By refusing to provide interpretation, the examining division had also infringed the appellant's right to be heard according to Art. 113(1) EPC which reflected the principle of procedural fairness.
The board referred to T 2249/13, which concerned a comparable situation. In that case, the board had stated in its communication that in effect, the appellant's allegation was that the examining division had infringed R. 4(1), (5) EPC by declining to provide official interpretation when the appellant's representative had filed a timely request to speak and hear an official language other than the language of the proceedings. The board, however, had indicated that even if a procedural violation might have occurred, it did not appear to have substantially affected the appellant's right to be heard (Art. 113(1) EPC). The appellant had not set out any actual communication problem caused by the lack of official interpretation, either at the oral proceedings before the examining division or with its statement setting out the grounds of appeal. Instead, the appellant had addressed only hypothetical problems that might occur in general if the right to exchange arguments in a desired language was restricted.
The current board added that indicating a potential problem did not mean that the problem had actually occurred. The burden of proof lay with the appellant, who had not satisfied its obligation to submit facts allowing an assessment of whether there had been a substantial violation of rights.
G. Formal aspects of decisions of EPO departments
1. Form of decisions
1.1 Signatures on a decision under Rule 113 EPC
(CLB, III.K.3.3.)
In J 16/17 the board held that the requirement laid down in R. 113(1) EPC, according to which decisions from the European Patent Office must be signed by and state the name of the employee responsible, is not just a mere formality but an essential procedural step in the decision-taking process. The name and the signature serve to identify the decision's authors and express that they unconditionally assume responsibility for its content. This requirement is aimed at preventing arbitrariness and abuse and ensuring that it can be verified that the competent body has taken the decision. It therefore constitutes an embodiment of the rule of law.
1.2 Deficient reasoning insufficient for the purposes of Rule 111(2) EPC
(CLB, III.K.3.4.4 b))
In T 655/13 the board held that in order for the examining division to make its reasoning on the basis of a pertinent prior-art document in a non-official EPO language comprehensible to the board, it must provide the translation used in the examination proceedings of at least the relevant sections of the document (or even of the whole document, if this is necessary for its overall understanding) into an official language of the EPO. Otherwise, the board is unable to examine the reasons for the decision, and in certain cases even whether the decision was justified or not, which amounts to a violation of the legal requirement for reasoned decisions under R. 111(2) EPC.
H. Inspection of files, European Patent Register and stay of proceedings
1. Stay of proceedings under Rule 14(1) EPC
(CLB, III.M.3., VII.1.2.)
In ex parte case T 1473/13 the appellant's request for a stay of proceedings mentioned constitutional complaints pending before the German Federal Constitutional Court (FCC) on the basis of claimed insufficient judicial relief at the EPO against decisions of the boards of appeal. The board highlighted the purpose of R. 14 EPC as set out in J 2/14: "to prevent a non-entitled applicant from impairing the position of a potential true proprietor by amending or even withdrawing the application without the latter's consent". In the case in hand, the board stated that what was at stake was the power of the board to decide upon, in particular refuse, a patent application, a power that a future FCC judgment might have an impact on. For the board it was not obvious that any FCC decisions on the constitutional complaints would have direct legal implications beyond those cases concerned. With reference to one of the constitutional complaints, the board explained that the appellant in the case in hand had not stated why and how a ruling on certain provisions of the EPC, its Implementing Regulations, the RPBA and the RPEBA could impact on other board decisions with effect for Germany. Neither the complainant in the constitutional complaint in its requests nor the appellant in its request for stay of proceedings even mentioned the German Act of Assent to the EPC embodying the order to apply the EPC in Germany, and the possible consequences of the nullity of the Act. For these reasons alone, the board found the request seeking a stay of the proceedings must fail. It held that the appellant had also stated no possible disadvantage from a decision of the board in the case in hand in case of success of the constitutional complaints. The board held that in the absence of an established disadvantage for the appellant, the respective adverse consequences of staying or not staying the proceedings (i.e. the delay of the proceedings) could not be balanced. Consequently, the board held the request for a stay must be refused.
(CLB, III.M.3.2.)
In J 4/17 the board held that the legislator left it to practice and jurisprudence to define the circumstances that justify setting a date for resumption on a discretionary basis. Resumption of the proceedings is not limited to cases involving misuse or delaying tactics. The possibility that the EPO sets a date for resumption upon staying the proceedings for grant hints towards a broader construction. However an applicant cannot justify its request for resumption based on the length of the entitlement proceedings where this duration has been significantly caused by the applicant's procedural conduct.
I. Intervention
1. Admissibility
1.1 National infringement proceedings
(CLB, III.P.1.3.)
In T 1746/15 the board followed T 1713/11, according to which "proceedings for infringement" pursuant to Art. 105(1)(a) EPC were "proceedings meant to establish whether a third party is commercially active in an area that falls within the patentee's right to exclude". The board held that the independent evidentiary proceedings under German law ("selbständiges Beweisverfahren" or "Beweissicherungsverfahren", § 485 DE-ZPO) initiated against the respondent by decision of the Landgericht Düsseldorf do not constitute the "establishment" of an infringement within the above meaning. The independent evidentiary proceedings under German law are comparable to "saisie" proceedings, e.g. "saisie-contrefaçon" in France, which are not regarded as "infringement proceedings" in terms of Art. 105(1)(a) EPC (T 1713/11 and T 305/08).
The appellant (opponent) in T 439/17 had filed notice of intervention in the opposition proceedings, invoking evidence preservation proceedings in Germany ("Beweissicherungsverfahren", § 485 DE-ZPO) that the patent proprietor had instigated. The patent proprietor had then, based on those proceedings' outcome, duly initiated infringement proceedings against the opponent while the appeal proceedings were pending. The appellant had argued that the two sets of proceedings had to be seen as one within the meaning of Art. 105 EPC, alleging support for its view in Section 493 DE-ZPO. The board disagreed, finding that it could not be derived from the latter provision that they had to be considered consolidated or otherwise procedurally linked. Furthermore, an intervention had to be admissible at the time of the intervention and could not be made admissible retroactively. In short, the board held that evidence preservation and subsequent infringement proceedings had to be seen as separate when applying Art. 105(1)(a) EPC; consequently the intervention before the opposition division had been inadmissible.
J. Apportionment of costs
(CLB, III.R.2.)
In T 280/15 the board held there to be no doubt that, since the appellant's notice of non-attendance at the oral proceedings had been received only the evening before them at 18.23 hrs, the requirements under Art. 104(1) EPC and Art. 16(1)(c) RPBA 2007 for an apportionment of costs against him had been met. The late notice had caused the respondent to incur costs, such as travel and accommodation expenses and its professional representative's fee for 12 hours' preparation, which could have been avoided had the appellant conducted itself properly and observed the basic rules of courtesy. Moreover, the appellant's conduct, and particularly the fact that it had not informed the respondent direct, had prevented the respondent from limiting, if not avoiding, further costs for attending the oral proceedings. Ultimately the appellant's conduct in response to the board's negative preliminary opinion, expressed in a communication before the oral proceedings, also prejudiced the efficient conduct of the oral proceedings by the board. Had the board known sooner of the appellant's absence, there would have been no reason to hold oral proceedings and engage four interpreters; the interpreters requested by the respondent had also been ordered, at the Office's expense, because of the appellant's attendance, but had then had to leave the oral proceedings without interpreting anything.
In T 2313/15 the respondent (opponent) requested an award of costs in the event that the case was remitted to the department of first instance. The board decided to remit the case but not to order a different apportionment of costs pursuant to Art. 104(1) EPC. The board noted that the patent proprietor in the proceedings before the opposition division had dealt with all the objections raised by the opponent in the reply to the notice of opposition. That it did so only by argument, without submitting auxiliary requests and without requesting oral proceedings, was a legitimate defence against an opposition, though it ran the calculated risk of an immediate adverse decision. Thus, the patent proprietor had no particular obligation to request oral proceedings before the opposition division. Its right to appeal or to file further requests on appeal was not affected by the mere fact that it did not request oral proceedings. The board failed to see any legal basis for the implied assertion of the respondent that the rights of the patent proprietor in the appeal proceedings were somehow more restricted because it had not requested oral proceedings. Nor did the board consider it equitable to impute to the patent proprietor the fact that the opposition division had chosen to decide the case on the basis of only one of the various issues raised and without summoning to oral proceedings (and was within its rights to do so). Likewise, the decision to remit the case upon appeal in accordance with common practice could also not be imputed to the successful appellant (patent proprietor). Finally, the fact that upon appeal the appellant argued only against novelty over D2 as the sole ground for revocation was not in any way reprehensible as it was all the appellant was required to do.
K. Notifications
1. Notification by postal services
(CLB, III.S.1.1.)
In T 1596/14 appellant I (patent proprietor) objected to the fact that the decision of the opposition division was sent to them with a date of 9 July 2014 and resent only to appellant II (opponent) at the later date of 22 July 2014. The board noted in obiter dictum that there was no evidence or indication that the alleged unequal treatment of the parties induced by different dates of notification of the same decision had been detrimental to any party's interests, and in particular, not to appellant I's interests. There did not appear to be any consequences for the admissibility of the appeals or for the due course of the ensuing appeal proceedings. The board noted that there was no specific sanction or remedy foreseen in the EPC for this situation and it seemed to the board that it was difficult to assume that appellant I's suggestion to resend the decision with a new common notification date would be a remedy, since the parties in the case in hand were already aware of each other's arguments.