T 0021/24 14-03-2025

1. Procedural matters - decision in writing

1.1 The case is ready for decision which is taken in written proceedings without holding oral proceedings in accordance with Article 12(8) RPBA and with Articles 113 and 116 EPC.

1.2 The board communicated its preliminary assessment of the case to the parties by means of a communication pursuant to Article 15(1) RPBA, according to which:

- the appeal of the patent proprietor should be dismissed,

- the decision under appeal was likely to be set aside, - the case should be remitted to the opposition division for further prosecution, and

- the appeal fee paid by opponent 1 should be reimbursed in full.

1.3 In response to the communication, both appellants withdrew their respective requests for oral proceedings and requested a decision in writing and that the case be remitted to the opposition division for further prosecution.

1.4 Since the appellants were informed of the board's preliminary assessment of the case, on which the present decision is based, the principle of the right to be heard pursuant to Article 113(1) EPC is observed since that provision only affords the opportunity to be heard and the parties' written submissions are fully taken into account.

1.5 As a consequence, oral proceedings were cancelled, and the board is in a position to take the present final decision on the basis of the contested decision to be reviewed and the extensive written submissions of the appellants (Article 15(3) RPBA), while preserving their rights under Articles 113 and 116 EPC.

1.6 The reasons for the decision given below follow the board's preliminary opinion provided in the communication pursuant to Article 15(1) RPBA which was neither commented upon nor contested in substance by the appellants (see the letter of the patent proprietor dated 3 February 2025 and the letter of opponent 1 dated 28 February 2025).

1.7 Under these circumstances, the board - having once again taken into consideration all the relevant aspects put forward in the parties' written submissions - sees no reason to deviate from its above-mentioned preliminary opinion and confirms it.

Patent proprietor's appeal

2. Main request - Added subject-matter, Article 123(2) EPC

2.1 The patent proprietor argued that the opposition division erred in its finding in point 2.2 of the reasons for the decision under appeal that the subject-matter of claim 1 according to the main request, and in particular feature 1.5,

"when two or more containers are stacked together such that goods stored therein remain secured within five closed sides of the container,"

extended beyond the application as originally filed.

In particular, the patent proprietor indicated that the skilled person would understand that the concept of providing access to the interior of the container, i.e. the container being in an open configuration, is at odds with the concept of securing goods within the container, and therefore were to be regarded as opposite concepts. The open configuration allowed goods to be removed, while securing the goods prevented such removal. Therefore, the skilled reader would understand that access was provided only when the container was open, and that goods remained secured when the container was closed. The possibility of goods being secured and removable (when the container was open) lacked technical sense and was therefore ruled out by the skilled reader, so that there was no extension of subject-matter beyond the original application.

2.2 The board disagrees and rather concurs with the opposition division and with the arguments of opponent 1 that, contrary to the patent proprietor's arguments, a skilled reader would not consider, looking at claim 1, that the accessibility to the interior of the container is in contradiction to the goods remaining secured. There is in fact no reference to a removal of goods in claim 1 according to the main request. It follows that claim 1 of the main request requires that when two or more containers are stacked together, the goods remain secured within five closed sides of the container in all spatial configurations, including the open configuration.

However, as acknowledged by the patent proprietor itself, according to the original disclosure, when the container is open, goods are no longer secured within five closed sides (see the closed configuration shown in figure 3a of the patent in suit, the open configuration shown in figure 3b).

Since the subject-matter of claim 1 of the main request covers the possibility that goods are secured within five closed sides also in an open configuration when two or more containers are stacked together, its subject-matter extends beyond the original disclosure.

2.3 In sum, the board concurs with the opposition division that claim 1 of the main request does not meet the requirements of Article 123(2) EPC.

2.4 The patent proprietor's appeal is thus to be dismissed.

Opponent 1's appeal

3. Auxiliary request 1 - Lack of reasoning, Rule 111(2) EPC; substantial procedural violation

3.1 According to the minutes of the first oral proceedings before the opposition division held on 23 May 2023, opponent 1 made an objection of lack of sufficiency of disclosure (see page 2, after the interruptions 14:07-14:17 and 14:33-14:40). This objection was therefore discussed between 14:40 and 14:50. Further, according to the minutes, the chairman of the opposition division announced that the invention was sufficiently disclosed.

3.2 However, as correctly indicated by opponent 1, the appealed decision is deficient and has to be set aside, because the issue of sufficiency of disclosure was not considered at all for any request.

3.3 The patent proprietor merely argued, in relation to the above mentioned deficiency, which was clearly identified by opponent 1, that the "little time" spent by the opposition division discussing these arguments was merely due to the fact that they lacked any merit.

3.4 The board notes that according to the established jurisprudence (see the Case Law of the Boards of Appeal, 10th edition 2022, III.K.3.4.3 and III.K.3.4.4) a decision should consider the essential facts, evidence and arguments in detail and contain the logical chain of reasoning which led to the conclusion drawn. The patent proprietor's allegation that the arguments of opponent 1 lacked any merit cannot amount to a justification not to observe the absolute requirement that the decision be reasoned according to Rule 111(2) EPC.

3.5 The board thus concludes that the lack of reasoning in the decision under appeal as regards sufficiency of disclosure amounts to a fundamental deficiency, and therefore to a substantial procedural violation because a fundamental procedural right of opponent 1 has been violated.

3.6 As a consequence of this substantial procedural violation the appealed decision is to be set aside, and the auxiliary request of the patent proprietor, namely that the appeal of opponent 1 be dismissed, cannot be allowed.

4. Reimbursement of the appeal fee paid by opponent 1, Rule 103(1)(a) EPC

As a further consequence of the above assessed substantial procedural violation, the board finds that a full reimbursement of the appeal fee paid by opponent 1 is equitable according to Rule 103(1)(a) EPC.

5. Remittal of the case to the opposition division for further prosecution, Articles 111(1) EPC and 11 RPBA

5.1 Rule 111(2) EPC gives parties to EPO proceedings a fundamental procedural right to be provided with the reasons for a decision.

5.2 Lack of compliance therewith is considered by the board as a fundamental deficiency occurred during opposition proceedings within the meaning of Article 11, second sentence, RPBA.

5.3 Such a fundamental deficiency is regarded by the board as amounting to a "special reason" within the meaning of Article 11 RPBA, which justifies a remittal to the opposition division for further prosecution, in accordance with Article 111(1) EPC.

5.4 The board notes that such a deficiency is not a minor defect. Furthermore, the fundamental deficiency in the decision under appeal as discussed above also prevents the board from any meaningful review of the opposition division's findings on the merits of the case as to whether or not the requirements of Article 83 EPC are met by any of the patent proprietor's requests.

5.5 In view of the above, the board orders the remittal of the case to the opposition division for further prosecution.