T 1500/10 20-12-2012

Reasons for the Decision

1. The appeal is admissible.

2. Amendments, Articles 123(2) and 84 EPC

2.1 The subject matter of claim 1 of the main request results from the technical disclosure of claims 1 and 4 as originally filed, page 24, lines 9 to 12 and page 26, lines 18 to 20.

The additional wording featuring in the first part of claim 1 as originally filed that (i):

"the acute angle (18) being selected to approximately coincide with an angle formed by the intersection of the side branch vessel (5) and the main vessel (6)"

and in the second part of claim 4 as originally filed that (ii)

"the aperture being sized and positioned in the outer wall surface so that when the stent is implanted in the main vessel (6), the aperture (25) is alignable with the side-branch vessel (5) thereby allowing unrestricted blood flow from the main vessel through the side-branch vessel (5)"

has no limiting effect on the scope of these claims but is of an explanatory character only. Consequently, the absence of wording (i) and (ii) in present claim 1 of the main request does not contravene the requirements of Article 123(2) EPC.

2.2 As to the issue of clarity, it is evident from the application as filed that the term "assembly for treating a bifurcation" in fact means a "stent deployment or delivery assembly" or a "stent delivery system", respectively, which is adapted specifically for treating bifurcated vessels and comprises the structural parts defined in claim 1. Reference is made in this context to the application as filed, page 1, lines 3 to 6; page 11, lines 9 to 11 and page 12, lines 6 to 10; page 24, lines 9 to 12; and page 27, lines 21 to 24.

Turning to the term "aperture", which was objected to by the examining division in the impugned decision with respect to clarity, present claim 1 now clearly defines by structural features that aperture (25) is located in the outer wall surface of the main-vessel stent and upon expansion approximates to the diameter of the proximal end (14) of the expanded proximal-angled stent.

Dependent claims 2 to 5 correspond to claims 2, 3, 5 and 6 as originally filed.

2.3 Claims 1 to 5 of the main request therefore meet the requirements of Articles 123(2) and 84 EPC, respectively.

3. Reimbursement of the appeal fee; Rule 103 EPC

3.1 In the present case, the Board considers that the conduct of the applicant in the first instance proceedings was such that it is not equitable to reimburse the appeal fee even if it were assumed in its favour that a substantial procedural violation occurred.

3.2 The reimbursement of the appeal fee under Rule 103(1)(a) EPC is subject to three conditions:

i. the Board of Appeal considers the appeal to be allowable;

ii. a substantial procedural violation occurred during the proceedings before the first instance department;

iii. the reimbursement is equitable.

3.3 According to the jurisprudence of the Boards of Appeal, the conduct of the appellant can render the reimbursement of the appeal fee not equitable (cf. condition iii) even if a substantial procedural violation occurred, in particular if the appellant made no use of opportunities given to it to participate in the initial proceedings (cf. decisions cited in Case Law of the Boards of Appeal of the European Patent Office, 6th edition, 2010, VII.E.17.3.2).

3.4 It is generally recognised that the purpose of oral proceedings is to settle as far as possible all outstanding questions relevant to the decision and to speed up the procedure (see Visser, The Annoted European Patent Convention, 19th edition, Article 116, point 1; Benkard, EPÜ 2nd edition, Art. 116 note 2; Singer-Stauder EPÜ Kommentar 5th edition, Art. 116 note 2; and also the "Notice from the European Patent Office concerning non-attendance at oral proceedings before the examining division", published in OJ EPO 2008, 471).

Accordingly, Article 116(1) EPC foresees that oral proceedings shall take place not only at the request of a party but also at the instance of the EPO if it considers this to be expedient.

This provision and the use of the word "shall" in it has three important procedural consequences:

i. It follows from this provision that the parties have not only a right to oral proceedings when they request them but also a duty to participate in oral proceedings, where this is considered expedient by the Office in order to assist the Office to bring the proceedings to a close.

ii. It also follows that parties do not have a right to a solely written procedure.

iii. It further follows that under the EPC oral proceedings are in themselves a procedural opportunity for a party to present comments and for the Office to present objections, even if these were not communicated beforehand. Whether in such a case a party who duly attends the oral proceedings has the right to an interruption or even to a postponement of the oral proceedings to answer these new objections will depend on the particular case. However, this is not the issue in the present case because the party did not attend the oral proceedings.

The consequence of the non-observation of the duty to attend the oral proceedings when they take place at the instance of the Office is set out on the one hand in Rule 115(2) EPC, according to which if a party duly summoned to oral proceedings before the EPO does not appear as summoned, the proceedings may continue without that party, and on the other hand in the "Notice from the European Patent Office concerning non-attendance at oral proceedings before the examining division", published in OJ EPO 2008, 471, which also makes it clear that a duly summoned party who chooses not to attend oral proceedings has to expect that a decision will be taken at the oral proceedings even if it has submitted amended claims on which no communication was issued.

In fact, this Notice, together with Rule 115(2) EPC, make it clear that the oral proceedings are themselves an opportunity for the applicant to present its comments, in accordance with Article 113(1) EPC. They confirm that, if a party decides not to attend the oral proceedings without a serious reason, it chooses not to make use of the opportunity to comment at the oral proceedings on any of the objections raised during them and, as explained above, it has no right to make additional written submissions.

3.5 As is apparent from the file, the examining division repeatedly explained to the applicant that it considered the oral proceedings to be necessary in order to clarify all the problems of the claims on file. It also appears from the file that it was clear to the appellant that the examining division had difficulty in understanding the case submitted by it and considered oral proceedings necessary to clarify the matter (see the letter of the appellant dated 10 December 2009).

It was clear to the appellant that the oral proceedings were appointed not only at its request but also because the examining division considered it expedient.

Thus, the applicant had an obligation to attend the oral proceedings as explained above under point 3.4.

3.6 Despite this clear situation, the applicant did not attend the oral proceedings and did not give any serious reasons for not attending.

In fact, the only reason for not attending was given in its letter dated 8 January 2010 which states that "... the applicant does not consider it beneficial to attend the forthcoming oral proceedings." It confirmed in the appeal proceedings that this was its only reason for not attending oral proceedings.

Serious reasons which could justify non-attendance at oral proceedings are the same reasons that could justify postponement and have been exemplified in the Notice of the Vice-President of Directorate-General 3 of the European Patent Office dated 16 July 2007 concerning Oral Proceedings before the Boards of Appeal (OJ EPO 2007, Special edition No. 3, 115). Although this Notice is directed to oral proceedings before the Boards of Appeal, the criteria set out therein are generally valid for all departments of the Office. From the examples given in this Notice, it can be seen that serious reasons are personal or social circumstances which prevent the party or its representative from personally attending the oral proceedings.

The Board does not consider the reason submitted by the appellant to be a personal or social circumstance which would have prevented it or its representative from personally attending the oral proceedings.

3.7 The appellant was very well aware of the consequences of its conduct. In its statement setting out the grounds of appeal it submitted: "As it turns out, the applicant's fears as to what might occur at the oral proceedings were fully realised...". Therefore, it cannot be said that in view of the objections previously raised it was taken by surprise.

The appellant submits that its conduct was correct, because it had asked for a discussion of the case over the phone and this was refused.

However, a telephone conversation with one examiner cannot be considered to be a replacement for oral proceedings because it does not allow the case to be concluded since the other members of the examining division are not present.

3.8 The appellant also appears to believe that it is up to the party to decide whether the proceedings should be conducted only in writing or over the telephone or in oral proceedings, and the Office has to adapt itself to its wishes. As explained above, although the parties have a right to oral proceedings when they request them, this does not mean that they have the right to decide in which way the proceedings as a whole are to be conducted.

3.9 It follows that the appellant not only consciously did not make use of a procedural opportunity given to it to present its comments but also acted in a way which was contrary to its procedural duty to assist the Office in bringing the case to a close.

This amounts to a conduct which contributed - as did the conduct of the examining division - to the procedural situation which arose in the oral proceedings and to the alleged procedural violation. Furthermore, it cannot be ruled out that the appeal could have been avoided if the applicant had attended the oral proceedings before the first instance.

3.10 G 4/92 was cited by the appellant. This opinion of the Enlarged Board of Appeal, which did not deal with the question of the equitableness of the reimbursement of the appeal fee, concerned inter partes cases and a theoretical situation in which,

first, one party files new facts or evidence for the first time during oral proceedings,

second, these facts or evidence are admitted by the opposition division although the late filing constitutes an abuse of procedure, and

third, the other party does not attend the oral proceedings although it should be noted that the reasons for the non-attendance were not dealt with by the Enlarged Board.

In fact, the duty to hear the absent party was the consequence of the late filed submissions being admitted (see points 7 and 8 of the Opinion). Thus, the procedural situation under consideration in G 4/92 is a very specific one and, according to this Board, this opinion cannot form the basis for a general modification of the duty established in Article 116(1) EPC.

Decision T 197/88, also cited by the appellant, is not applicable because in the present case the examining division did give the applicant an opportunity to present comments. Decision T 951/92 is not relevant because it did not deal with the question of whether the reimbursement of the appeal fee was equitable.

3.11 For the above reasons the reimbursement of the appeal fee is not equitable.