T 0484/90 (Cable car) 21-10-1991

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 and Rules 1(1) and 64 EPC, and is therefore admissible.

2. As can be seen from the facts set out above, the decision to revoke the patent issued at the end of oral proceedings in the absence of the appellants was given without the appellants being able to comment on document D1, on which the decision was based. The appellants did not in fact become aware of document D1 until the written reasoned decision was sent to them three months later, on 30 April 1990.

The appellants are thus right in asserting that the Opposition Division's decision was in breach of the principle enshrined in Article 113(1) EPC, which states that decisions of the European Patent Office may only be based upon grounds or evidence on which the parties concerned have had an opportunity to present their comments.

"Grounds or evidence" within the meaning of Article 113(1) EPC are to be understood to mean not only the grounds for opposition listed under Article 100 EPC, but also evidence or arguments such as the documents presented in support of those grounds. In J 20/85, OJ EPO 1987, 102, the Legal Board of Appeal ruled that the principle enshrined in Article 113(1) EPC was of "fundamental" importance for ensuring a fair procedure between the European Patent Office and parties conducting proceedings before it, and that the European Patent Office could only properly issue a decision against a party if the evidence upon which such a decision was to be based had been identified and communicated to the party concerned.

In the present case the Opposition Division could only properly have issued a decision against the appellants at the end of oral proceedings which they had not attended if the appellants had been given the opportunity, before the oral proceedings, to examine and discuss document D1 upon which the decision was based.

3. The Opposition Division maintains that D1, although not submitted until the very day of the oral proceedings, was particularly relevant and therefore had to be examined of the Division's own motion, in accordance with Article 114(1) EPC.

The Board is unable to follow the Opposition Division on this point, because although under Article 114(1) EPC the Office's power to examine "shall not be restricted ... to the facts, evidence and arguments provided by the parties and the relief sought", it is restricted in two other ways. Firstly the Office must remain within the framework of the Convention, secondly any new document or other evidence taken into consideration by virtue of this power must also be submitted to the parties for discussion in accordance with their right to comment (or right to be heard) enshrined in Article 113(1) EPC, a principle that J 20/85 (op. cit.) ruled was of "fundamental" importance.

In support of its decision the Opposition Division cited T 156/84 (OJ EPO 1988, 372), which confirmed that the principle of examination by the Office of its own motion enshrined in Article 114(1) EPC takes precedence over the provisions of Article 114(2) EPC, according to which the Office may disregard facts, evidence and arguments which are not submitted in due time, the EPO also having a duty to the public not to grant or maintain patents which it is convinced are not legally valid. The Board accepts this interpretation of Article 114 EPC, albeit with the following proviso: if a document is produced late by one of the parties and this document is essential for the decision to be taken, it must be taken into consideration under Article 114(1) EPC provided this does not in any way infringe the right to be heard enshrined in Article 113(1) EPC.

4. Rule 71(2) EPC does indeed state that "if a party who has been duly summoned to oral proceedings before the European Patent Office does not appear as summoned, the proceedings may continue without him". The appellants having been duly summoned, the proceedings could indeed have been continued without them. However, the possibility provided for under Rule 71(2) EPC of continuing oral proceedings without the appellants and of issuing a decision against them at the end of those proceedings is also subject to the restriction described above, namely that there should be no infringement of their right to be heard.

This restriction is also outlined in the Guidelines for Examination, E-III, 8.3 (final paragraph), which says that if new facts and evidence of which account is to be taken in the decision are mentioned in the oral proceedings and bring about an unexpected turn in the proceedings for a party who has failed to appear, that party must have the opportunity of commenting on the matter before a decision is reached.

In the present case, throughout three years which the opposition proceedings lasted, the only evidence or argument put forward in support of the opposition was prior use. On the day of the oral proceedings, prior use was no longer being claimed, the witnesses summoned did not appear and the European patent was revoked on the basis of an entirely new document which was submitted that same day.

5. This was indeed an unexpected turn in the proceedings. The appellants had absolutely no reason to expect the Opposition Division's decision to be based on anything other than the claimed prior use. Taking one of the parties by surprise and preventing it from exercising its right to be heard under Article 113(1) EPC is a substantial procedural violation within the meaning of Rule 67 EPC.

6. Of course, if a party chooses not to appear - which is not the case here (see point III above) - it must normally be prepared to accept the consequences. For reasons of procedural economy, every effort should indeed be made to arrive at a decision by the end of oral proceedings, and this decision could even be based on facts or arguments upon which the parties have had no opportunity to comment before those proceedings, particularly if the new facts or arguments are based on grounds or evidence on which the absent party has already had an opportunity to comment.

In other words, the Board's view is that a decision against a party duly summoned to but failing to appear at oral proceedings which is based on new evidence, such as a new document, on which that party has not had the opportunity to comment, may not be pronounced at the close of those proceedings without infringing that party's right to be heard, unless the absent party indicates that it is forfeiting this right. Otherwise the proceedings must be continued in writing or new oral proceedings convened. As Rule 68(1) EPC states, where oral proceedings are held the decision "may" be given orally, but it does not have to be.

7. The Board also looked at other Board of Appeal decisions on similar procedural questions and found no contradiction between the present ruling and those in other cases.

In T 135/85 of 24 September 1987 (not published) oral proceedings were continued in the respondents' absence, and an oral decision issued against them. Point 4 of the Reasons for the Decision

clearly states that the decision was based only on grounds (lack of inventive step) and evidence (documents D1 and D3) already adduced in the appellants' statement of grounds.

In T 186/83 of 20 August 1985 (not published) a party had notified the Board in writing that it would not be appearing at the oral proceedings. The Board held (Reasons point 5.2.4) that a party failing to attend such proceedings of its own volition after being duly summoned to do so ran the risk that new arguments would be presented in its absence and would be found convincing by the Board. It had no ground for complaint if this happened.

However, as in T 135/85 mentioned above, the decision was taken against a party not attending of its own volition and based on grounds of opposition (lack of inventive step) and evidence (a document) that the absent party had been able to view and comment on beforehand.

In T 561/89 of 29 April 1991 (not published), the appellants (opponents) did not attend the oral proceedings; a decision maintaining the patent in amended form was given at the end of those proceedings on the basis of new claims submitted during them. In this case too however, the decision was based on grounds (lack of patentability) and evidence (documents) upon which the party choosing not to appear had already commented.

In a more recent decision, T 574/89 of 11 July 1991, Board of Appeal 3.3.1 issued a communication under Article 110(2) EPC expressing doubts about the probative value of the comparative tests performed by the appellants (patent proprietors). The appellants replied that they would be conducting new tests for submission in evidence. The respondents (opponents) chose not to appear at the oral proceedings; the results of the comparative tests were presented at the oral proceedings and a decision to maintain the patent based on the test results was issued at the end of those proceedings.

The party present at the oral proceedings had thus within a reasonable time informed the parties choosing not to attend of the evidence they intended to put forward in support of their case; the absent parties were not therefore taken by surprise. Furthermore, as Board 3.3.1 correctly observed, this evidence could not be described as having been submitted late as it had been furnished in response to an objection raised by the Board.

More generally, however (see Reasons point 5.3), Board of Appeal 3.3.1 ruled that an oral decision could be issued against a party choosing not to appear at oral proceedings, even if this decision was based on new evidence only introduced during those proceedings.

The present Board takes a different view. As the Enlarged Board of Appeal stated in G 1/88 (OJ EPO 1989, 189 "Opponent's silence/HOECHST", Reasons point 2.4), surrender of a right cannot be simply presumed - particularly when, as in this case, the right in question - the right to be heard - is so fundamental, and its observance an essential guarantee of sound justice.

The Enlarged Board of Appeal ruled that where the legal consequence of an omission is to be a loss of rights, this is expressly stated - in line with the Convention's general drafting philosophy. In the present case the Convention makes no such provision, Rule 71(2) EPC stating merely that the proceedings "may" continue in the absence of a duly summoned party.

In practice, the fact that a party prefers not to attend oral proceedings does not necessarily mean it wishes to surrender its right to be heard. The party may simply feel that the evidence put forward by the opposing party is of no relevance, and that the oral proceedings are pointless; or that the facts of the case are so clear there is no need for oral proceedings. In particular, parties which would have to travel long distances from abroad may decide not to attend for financial reasons. The Board therefore takes the view that a party's non-attendance, even if voluntary, cannot be interpreted as a surrender of so fundamental a right as that to be heard, unless the absent party has clearly indicated, either expressly or implicitly, that it is forfeiting that right, for example by stating that it does not wish to comment on any new evidence that might be put forward during oral proceedings.

In the present case the appellants did not indicate that they would not be attending the oral proceedings, nor that they were surrendering their right to be heard. On the contrary, their letter of 21 December 1989 clearly stated that they intended to attend.

8. The fax sent by the patent proprietors to say that they would be unable to attend the oral proceedings was received by the Office at 08.35 hrs on Monday 29 January 1990. It was marked "urgent" and clearly referred to the oral proceedings scheduled for 09.00 hrs that day. The Opposition Division did not, however, receive it until 14.00 hrs the next day (30 January 1990).

The Board finds it unacceptable that this fax took more than a day to reach the Opposition Division. Given that the oral proceedings closed at 10.40 hrs, more than two hours after the urgent fax had been received, the Division could have been informed of it during those proceedings, by telephone, for example. To quote T 231/85 (OJ EPO 1989, 74) (Reasons point 10):

"The Examining Division cannot itself be held responsible for the fact that these alternative requests did not come to its notice in time, but this failing does have to be attributed to the Office, which must be organised in such a way that incoming mail is promptly forwarded to the department competent to reach the decision."

9. Although the appellants have not requested reimbursement of the appeal fee, the Board feels it should apply Rule 67 EPC, which provides for reimbursement if an appeal is deemed to be allowable and if such reimbursement is equitable by reason of a substantial procedural violation. These conditions are clearly met in the present case.

10. The Board has decided to apply Article 111(1) EPC and, exercising the powers of the Opposition Division responsible for the decision under appeal, to continue with the opposition proceedings itself.

The new amended Claim 1 is an amalgamation of Claims 1 and 10 of the European patent as granted. The respondents only cited the first seven claims in support of their opposition, meaning that Claim 10 was excluded. The question is thus whether the Board has the duty or the power to examine the patentability of Claim 1 as amended.

Unopposed Claims 8 to 10 of the disputed European patent in suit are dependent on opposed Claim 1. Under these circumstances, and in line with T 192/88 of 20 July 1989 (see point 2 of the Reasons), the Board construes the notice of opposition as comprising Claims 8 to 10 to the extent that they refer to opposed Claim 1 of the patent.

Furthermore, under Article 102(3) EPC the Opposition Division or the Board of Appeal is obliged to examine whether the subject- matter of Claim 1 as amended meets "the requirements of this Convention", and specifically whether its subject-matter is novel and inventive.

11. As pointed out above ...

15. For these reasons and having regard to the available prior art, the subject-matter of Claim 1 as amended has inventive step within the meaning of Article 56 EPC. This ruling also extends to Claim 2, which is dependent on Claim 1 and claims a particular embodiment of the device described in Claim 1. It follows that the European patent can be maintained in its amended form.