S. Notifications
Overview
T 1529/20 × View decision
Abstract
In T 1529/20 the appellant (proprietor) submitted that they had never received the decision of the opposition division revoking their patent and that they had only become aware of it and, more generally, of the opposition proceedings, through an email from a formalities officer of the EPO.
The board explained that with the abolition of advices of delivery for notification of decisions by registered letter (see OJ 2019, A31), it was the practice of the EPO at the time to enclose an acknowledgement of receipt (Form 2936) with notifications by registered letter of decisions incurring a period for appeal and summonses. Addressees were requested to date and sign the form and return it immediately, as evidence of receipt (see OJ 2019, A57).
The board established that the present file did not contain a confirmation of receipt of the decision of the opposition division from the appellant. Since the EPO could not prove whether the registered letter had reached the appellant, as required by the provisions of R. 126(2) EPC in force at the relevant time, it had to be accepted that the legal fiction of deemed notification did not apply and the appellant became aware of the appealed decision for the first time with the email from the formalities officer. This date was therefore the date of notification of the decision. Thus, the appeal was timely filed.
With regard to the right to be heard, the board held that, as argued by the appellant, the missing opportunity to present their arguments during the opposition proceedings amounted to a substantial procedural violation (Art. 113(1) EPC).
The board observed that, even in view of the notice of the EPO concerning implementation of amended R. 126(1) EPC (OJ 2019, A57) – which did not require to enclose an acknowledgement of receipt (Form 2936) with the communication of the notice of opposition – the requirements of Art. 113 EPC had to be complied with. Before a negative decision revoking a patent was issued, it had to be established that the patent proprietor had been duly informed about the initiation of opposition proceedings. The board explained that the notice of the EPO merely determined the format of notifications. However, the provisions of R. 126(2) EPC remained unaffected. R. 126(2) EPC defined a rebuttable fiction of notification, which, in case of dispute, had to be verified. The burden of proof lied with the EPO.
The board agreed with the appellant that a party submitting that something had not happened, i.e. that a communication had not been received, was in difficulties in trying to prove a negative (negativa non sunt probanda, see also T 2037/18, R 15/11, R 4/17). The filing of cogent evidence showing that a letter was not received was hardly ever possible (see also J 9/05). Therefore, the respondent's arguments that the appellant allegedly had the duty to register mail incoming at their premises but failed to provide an excerpt of such register was not pertinent, since there was no trace in the file that the EPO discharged its burden of proving delivery. Under such circumstances, the appellant did not have to bear the risks normally falling in their sphere of responsibility (T 1535/10), so that they have to be given the benefit of the doubt (J 9/05).
According to the board, in the present case legal certainty and the protection of the right to be heard would have required that the opposition division had established, by any available means, the fact and date of delivery of the communication of the notice of opposition.
The patent proprietor could decide not to react to the notice of opposition. Nevertheless, the communication under R. 79(1) EPC was not a mere formality. Rather, it had the function of allowing the patent proprietor to both contribute to the opposition division's appreciation of the facts and to defend their interests. Since the initial act of (non-)notification of the notice of opposition was flawed, the entire opposition proceedings including the decision of the opposition division was flawed.
Thus, the board set aside the appealed decision and remitted the case to the opposition division for further prosecution. The appeal fee was reimbursed.
S. Notifications
Notifications are governed in detail by Art. 119 EPC and R. 125 to 130 EPC. Notification may be made by post, delivery by hand, public notice or, as provided for in R. 127 EPC, by means of electronic communication. A set of amendments to the Implementing Regulations concerning notification and the use of electronic tools in proceedings before the EPO entered into force on 1 April 2015 (see Administrative Council decision CA/D 6/14, OJ 2015, A17). In particular amendments to R. 125 EPC, R. 126 EPC, R. 127 EPC and R. 129 EPC were adopted, and these are explained in the sections on the individual forms of notification below. Amended R. 125(1) EPC clarifies what documents must be notified and serves merely as an explicit legal basis for the EPO's existing practice of not formally notifying notices and communications from which no time limits are reckoned (see notice of the EPO dated 30 March 2015, OJ 2015, A36). R. 126(1) EPC was further amended by Administrative Council decision CA/D 2/19 (OJ 2019, A31) to remove the requirement to notify with advice of delivery.
With regard to notifications by electronic communication, a pilot project was launched by the decision of the President of the EPO dated 4 July 2012 (OJ 2012, 486), with the aim of progressively introducing new technical means for the electronic communication of patent applications, other documents, notifications and further information. The pilot project was continued by the decision of the President of the EPO dated 11 March 2015 (OJ 2015, A28). In accordance with Art. 12 of this decision of the President of the EPO, with decision of the Vice-President Legal and International Affairs (Directorate-General 5) of the EPO dated 23 July 2020 (OJ 2020, A89) the EPO launched a pilot project permitting examining divisions to use email to notify important information about oral proceedings. This decision entered into force on 1 September 2020, and the pilot project ran until 31 August 2021.
From 1 June 2021, the boards of appeal began to notify documents in appeal proceedings electronically via the EPO Mailbox (notice of the President of the Boards of Appeal dated 13 April 2021 concerning the extension of electronic notification via the EPO Mailbox to appeal proceedings; OJ 2021, A37).
- T 1529/20