6. Right to be heard in opposition proceedings
6.2. Invitation to file observations under Article 101(1) EPC
Art. 101(1) EPC (Art. 101(2) EPC 1973) reinforces the right to be heard laid down in Art. 113 EPC by requiring the opposition division, when examining an opposition, to invite the parties "as often as necessary" to comment, within specified periods, on its own communications or those filed by other parties. Where necessary, any communication to the proprietor of the European patent must contain a reasoned statement covering all the grounds against the maintenance of the European patent (R. 81(3) EPC; R. 58(3) EPC 1973).
Art. 101(1) EPC does not require as a rule that the grounds for not maintaining the patent invariably be set out in a communication, but only if this is "necessary". Such "necessity" can arise only in efforts to establish the facts or in view of Art. 113(1) EPC. So the opposition division must issue a communication only if it considers this necessary, e.g. to take up new substantive or legal arguments or draw attention to points still requiring clarification. R. 81(3) EPC, which merely contains instructions concerning the content of any communications that may have to be issued, adds nothing to the above consideration of principle. Accordingly, the provisions of Art. 101(1) EPC and R. 81(3) EPC cannot be interpreted as meaning that the opposition division is obliged in every case to issue at least one communication before giving its decision, unless it is necessary to do so on the basis of Art. 113(1) EPC (see e.g. T 275/89, OJ 1992, 126; T 538/89, T 682/89 and T 532/91).
Not issuing at least one communication under Art. 101(1) EPC cannot in itself substantiate an allegation of infringement of the right to be heard under Art. 113 EPC (see e.g. T 774/97, T 781/08 and T 802/12). In T 165/93, for example, the board saw no need under Art. 113(1) EPC for the opposition division, before revoking the patent, to announce its opinion in a communication or to give a further opportunity to the patentee to declare whether he was interested in a limited patent if, despite having been informed of an additional objection of the opponent, he did not react but maintained his sole request for maintenance of the patent with the amended claims. Nor is it necessary under Art. 113(1) EPC to give a party a repeated opportunity to comment on the argumentation of the EPO body, so long as the decisive objection against the contested procedural action remains the same (see e.g. T 161/82, OJ 1984, 551; T 621/91).
According to T 295/87 (OJ 1990, 470), in opposition proceedings, under Art. 101(2) and R. 57(1) EPC 1973 (Art. 101(1) and R. 79(1) EPC) the proprietor has a right to file observations upon a notice of opposition. Thereafter, observations from the parties are only admissible in the exercise of the discretion of the opposition division or a board of appeal, if such observations are necessary and expedient in the sense of Art. 101(2) and R. 57(3) EPC 1973 (Art. 101(1), R. 79(3) EPC). The board specified that following communication of the patentee's observations (and any amendments), other parties are only to be invited by the opposition division to reply to such observations "if it considers it expedient". It was clearly desirable in the interest of the smooth and efficient conduct of opposition proceedings, and in the public interest, that observations by parties should be properly limited to what is necessary and expedient. This in turn required the exercise of a proper control by the opposition division over the admissibility of observations by parties as well as of documents filed in support of such observations. Of course, the extent to which further observations are necessary or expedient depended upon various factors, including the complexity of the issues, and could only be decided in the context of each case.
For cases where a communication was considered necessary, see in this chapter IV.C.6.5. below (T 293/88, T 120/96 and T 1056/98).
- T 2120/18
Catchword:
1. An opposition division's rejection of a request for extension of the time limit indicated in its communication under Rule 79(1) EPC does not terminate the opposition proceedings. Therefore, a patent proprietor is in a position to respond to the notice of opposition beyond the expired time limit or, at least, request the rejection of the opposition as well as oral proceedings. The patent proprietor must anticipate that an opposition division may issue its decision after expiration of the time limit (see Reasons 4.5, 4.6 and 4.9).
2. There is no legal basis for a duty on the part of the opposition division to notify the patent proprietor in advance of its intention to reach a decision, even if that decision concerns the revocation of the patent (see Reasons 4.8, 4.10 and 4.11).
3. If a patent proprietor chooses not to file any submissions during the opposition proceedings but to present them only with its statement of grounds of appeal, this amounts to bringing an entirely fresh case in appeal proceedings. This is at odds with the primary object of the appeal proceedings to review the decision under appeal in a judicial manner. Consequently, a board has the discretion under Article 12(4) RPBA 2007 not to admit the patent proprietor's defence submissions into the appeal proceedings. This does, however, not necessarily lead to revocation of the patent. The decision under appeal is still to be reviewed by the board, which might overturn the impugned decision, for example if it is not convinced by the reasons given by the opposition division or in the event of a substantial procedural violation (see Reasons 5.5 and 5.6).
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