6. Right to be heard in opposition proceedings
6.4. EPO communication concerning submissions by the other party – adequate opportunity to reply
Communications signed by the formalities officer and inviting the appellants to "take note" of the opponents' submissions are not communications of the opposition division within the meaning of Art. 101(1) EPC (Art. 101(2) EPC 1973), which require a period to be fixed for reply. It is at the discretion of the recipient to reply to this communication if he finds it necessary. If he intends to reply but for any reason is prevented from doing so within a reasonable period of time, then the appropriate action is to inform the opposition division of his difficulties (see T 582/95).
The boards of appeal have dealt in a series of decisions with the issue of determining what is a reasonable period which provides the recipient of an EPO communication with an adequate opportunity to reply:
In T 275/89 (OJ 1992, 126) the board noted that the opposition division had waited for somewhat longer than a month before taking its decision. In the board's view, in the case of a communication which was issued for information purposes only and which did not set a time limit for response, a period of one month (which in the present case was exceeded) sufficed as a rule to comply with the requirements of Art. 113 EPC. Moreover, the documents on which the decision under appeal was based had already been mentioned in the notice of opposition together with an assessment of their substantive and legal significance.
In T 263/93 the board held that the right to be heard enshrined in Art. 113(1) EPC requires that the party concerned be given sufficient time to submit an adequate response if the EPO decides to communicate to a party to proceedings before it an objection raised by another party without an express invitation to reply within a specified time limit. The question regarding what period of time is sufficient for this purpose is a question of fact which has to be answered on the basis of the merits of each individual case. The board further noted that, as a rule, a time limit set by the EPO should not be shorter than two months (see R. 132 EPC, former R. 84 EPC 1973). In the circumstances of T 263/93, where difficult technical questions had to be considered, the board came to the conclusion that the appellant's right to a fair procedure would have required the opposition division to have waited at least two months before issuing a decision based on the objections raised for the first time in this counterstatement. This was confirmed in T 1152/14.
In T 494/95, the board took the view that the interval of more than one month between the notification of the patent proprietor's reply to the opposition and the date of issuing the decision was sufficient to allow the appellant (opponent) a reasonable opportunity to present his comments, or at least to indicate an intention of so doing, or to request oral proceedings. In the board's view, it was clear from R. 57(3) EPC 1973 (R. 79(3) EPC), from the EPO information "Opposition Procedure in the EPO" (OJ 1989, 417) and from previous decisions that, if oral proceedings did not take place and the decision was based solely on grounds on which the parties concerned had had an opportunity to present their comments, a decision could be taken without further notice upon expiry of the period allowed to the patent proprietor for submitting observations.
In T 914/98 the board stated that the seventeen-day period which elapsed between the appellants receiving the reply of the respondents and the handing over of the decision to the EPO internal postal service was manifestly too short to give the appellants an adequate opportunity for comment. According to the board, in view of the case law the appellants could not reasonably have expected a decision to be issued so quickly.
However, the board in T 2243/18 held that there was no requirement in the EPC for the opposition division to wait for further submissions of the parties after the notice of opposition and the reply of the proprietor have been received. On the contrary, parties should expect the opposition division to prepare the next action (in most cases summons to oral proceedings) at any time after receiving the reply of the proprietor (see notice from the EPO concerning the opposition procedure as from 1 July 2016, OJ 2016, A42, point 3).
- T 1529/20
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.